Monday, April 16, 2018

IBM's improvement arguments overcome Alice rejections, win random number generation claims at the PTAB


Takeaway: The PTAB reversed Alice rejections of pure-software random digital generation claims, crediting the appellants' improvement argument in the face of examiner criticism of that argument and even in the absence of a reply brief addressing that criticism.

Details:


Ex parte Sherwood

Appeal No. 2017-006552; Application No. 13/906,056; Tech. Center 2100
Decided: Sep. 28, 2017

The application on appeal, titled "Balancing Consumption of Random Data", described improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation.  A representative claim on appeal read:

21.  A digital data apparatus for producing random digital data, comprising:
       at least one physical processor;
       a physical system memory;
       a plurality of entropy sources each generating respective random source digital data having a corresponding level of entropy, including a first entropy source generating random source digital data having a first level of entropy, and a second entropy source generating random source digital data having a second level of entropy lower than said first level of entropy, said second entropy source being independent of said first entropy source;
       a random number generator embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, said random number generator receiving input from each said plurality of entropy sources, said random number generator generating a random digital data output by a deterministic algorithm using input from a selective one of said plurality of entropy sources as a seed for said deterministic algorithm;
       an entropy manager embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, wherein said entropy manager automatically selects one entropy source among said plurality of entropy sources as input for the seed for said deterministic algorithm used by said random number generator, said entropy manager automatically selecting one entropy source among said plurality of entropy sources by determining a minimum level of entropy required by a consuming entity from among multiple possible minimum levels of entropy required, wherein the consuming entity consumes random digital data output by said random number generator to perform at least one data processing function, wherein the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator to produce the random digital data output consumed by the consuming entity, said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.
(Emphasis added.)

The final rejection held that the claims were directed to the abstract idea of "performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations."  The rejection stated that
[t]hese steps merely employ basic concepts drawn to manipulating information using mathematical and logical concepts which is similar to the basic concept of manipulating information using mathematical relationships found to be an abstract idea by the courts. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not add a meaningful limitation to the abstract steps as they would be routinely used by those having ordinary skill in the art on a general purpose computer.
With regard to the second step of the Alice framework, the examiner found that the recitation of processor and memory in the claims did not amount to significantly more, and likewise,
the recitation of elements such as "entropy sources", "random number generator", "entropy manager", and "cryptographic apparatus" are also generic because there is no evidence in the specification that these elements must be specific hardware elements. For example, the claimed random number generator and entropy manager are embodied as code and the claimed cryptographic functionality is defined in the specification as software. A general purpose computer can be programmed to execute code and software.
The examiner also addressed the applicant's argument that the claims were directed to an improvement in computer technology:
[T]he invention as claimed is not drawn to an improved encryption engine for a computer system that improves efficiency. . . . [T]he applicant has failed to point to evidence that using "relatively lower entropy data for certain less essential purposes" improves efficiency of the claimed invention.  The applicant's arguments cannot take the place of evidence.
(Emphasis in original.)

The appeal brief is worth quoting at length:
[The] invention relates to "improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation" . . . Although improved performance is the primary motivation, Appellant's technique . . . may, by using highest quality random data only when necessary, permit a higher quality of randomness to be used in those circumstances which require it.
A computer-implemented cryptographic engine or random data generator necessarily receives input in the form of data, i.e., strings of '1's and '0's, and performs a series of mathematical steps and takes branches based on determinations made using data, to produce a final result, which is again data, i.e., strings of '1's and '0's.  . . . [A]ny computer-implemented process can ultimately be reduced to receiving data as input, performing a series of mathematical steps and branches based on determinations made using the data, and producing a result in the form of data.  That is the very essence of a deterministic sequential state machine.  No computer, no matter how fast, sophisticated or advanced over other computers, can do anything beyond these basic steps.
If any machine or process which is limited to receiving data input, performing mathematical manipulations of the data, making decisions based on results, and outputting data, is deemed an "abstract idea", the Patent Office might as well give up patenting computer implemented inventions, for all such inventions, no matter how complex or sophisticated, ultimately can be broken down into simple mathematical steps and branches.  This is clearly not what the law is and not what was intended by the recent Supreme Court decision in Alice Corp. v. CLS Bank. . . . [T]t is true that in a very general sense Applicant's invention does [manipulate information using mathematical relationships].  As does each and every computer-implemented invention that has been patented by the Patent Office. . . . The Examiner's reasoning appears to be exactly the type of overly broad application of the "abstract idea" doctrine which was disapproved by the Federal Circuit in Enfish. . . .  Appellant's invention does not come close to pre-empting the field of "manipulating information using mathematical relationships".
(Emphasis in original.)

The examiner answered that:
[P]reemption is not the test for judging subject matter eligibility under the Alice analysis.  Rather, the test consists of (in summary) determining whether the claimed invention is drawn to a judicially recognized exception.  If so, then the claimed invention is further analyzed to determine whether there is additional subject matter recited that amounts to significantly more than the judicial exception.
The claims are drawn to apparatuses, methods, and computer program products which perform mathematical steps. These steps manipulate information using mathematical and logical concepts. Ideas such as this have been found by the courts to be abstract. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972).  In Flook, the claimed invention was drawn to the abstract idea of gathering numerical information and manipulating it mathematically.  In the instant case, entropy information is gathered in the form of binary numbers and is manipulated mathematically to generate random data, which is also represented in binary.
The examiner called the appellants' improvement argument "flawed":
Appellant's only explanation that the claimed invention is an improvement is that computer system efficiency is improved "by using relatively lower entropy data for certain less essential purposes." . . . However, Appellant never defines what these "purposes" are.  More importantly, the entropy data is used for random number generation, this being the only "purpose" that can be inferred from Appellant's argument.  How this improves computer system efficiency is not explained in Appellant's argument. Appellant merely asserts that these purposes exist without citing any evidence as to what they are.
The appellants did not file a reply brief to address this rebuttal.  Nevertheless, the Board "agree[d] with Appellants that the Examiner has overgeneralized the claimed invention by summarizing it as the mere performance of mathematical steps, or as information gathered in the form of binary numbers that is manipulated mathematically to generate random data", and took it upon themselves to scour the specification for the inventive concept:
[The] invention is directed to generating random digital data for use by a consuming entity.  For certain purposes, e.g., strong encryption, random data having higher entropy is required; for other purposes, lower entropy (and thus quicker to gather) random data will suffice. . . . In the invention, an entropy manager determines the minimum level of entropy required by a consuming entity, and selects the random data (i.e., entropy) source that supplies random data having a requisite level of entropy for the consuming entity’s purposes.
We do agree generally with the Examiner’s conclusion that Appellants’ claimed invention is drawn to an abstract idea. The claims under appeal are drawn to method and apparatus for producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed.
Appellants persuade us, however, that the claims are, nonetheless, statutory under the second prong of the Alice analysis.  Representative claim 21 recites, inter alia, an entropy manager that “automatically selects one entropy source” from among a plurality, as the seed for the deterministic algorithm. The entropy manager makes this selection “by determining a minimum level of entropy required by a consuming entity . . . the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator . . . said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.”
In support, Appellants’ Specification discloses that “[h]igh-entropy data is difficult for a computer to generate,” and even if one resorts to techniques such as monitoring network traffic, “it takes time in order to gather such random data.” . . . Appellants’ invention, thus, sets forth a system that automatically balances the tradeoff between (a) high entropy, hard to predict (and thus hard to attack) data that is scarce, time-consuming to produce, or both, and (b) lower entropy, less difficult to predict (but less secure) data that is easier to gather, less computationally intensive to produce, or both. See Spec. 9-10.
We conclude that the function of the entropy manager in the claimed invention results in claims drawn to significantly more than an abstract idea.  See Alice, 134 S. Ct. at 2355.  Like the animation method in McRO Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), we conclude that the claims under appeal are limited to rules with specific characteristics.  McRO, 837 F.3d at 1314—15.  Like the self-referential logical table in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), we conclude that the appealed claims focus on a specific means or method that improves the relevant technologySee Enfish, 822 F.3d at 1335.  Here, Appellants’ invention focuses on a specific method of providing an entropy manager to make a decision concerning the appropriate entropy level to be employed, in order to supply random digital data of sufficient entropy while conserving computer processing power and/or time.
(Emphasis added.)  Thus, the Board reversed the subject-matter eligibility rejections, and the appellants were issued their patent (No. 9,934,000).


My two cents:

This post in the fifth in a series examining improvement arguments and their rapidly mounting significance in winning reversals of Alice rejections at the Board.  The first post in the series provided a set of practice tips.  This case is an example of an improvement argument winning at step two of the Alice framework, and illustrates the examiner demanding evidence in support of the improvement argument (see practice tip #7) but the appellants not needing it to win.

The abstract idea to which the examiner alleged the claims were directed ("performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations") is a mouthful, but the Board nonetheless agreed that the claims were drawn to an abstract idea, albeit one of a different description: "producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed."

The Board gave no credit to the examiner's argument that additional evidence was required to show that using "relatively lower entropy data for certain less essential purposes" resulted in an efficiency improvement.  Instead, the Board found the description in the specification to be self-evident of the cause and effect reasoning necessary to support the improvement argument.

Only about six months elapsed between the docketing of the appeal and the handing down of the Board's decision.  This seems unusual, as most practitioners are more accustomed to appeal pendency on the order of years rather than months.  According to contemporary PTAB statistics, average appeal pendency for cases originating from technology center 2100 at the time of this decision was 13.2 months, down a spectacular 11.1 months from the same time the previous year.  Although appeal pendency has been dealt with very effectively and continues to fall (it's down to 13.0 months in 2100 at last count), this appeal was still delivered in less than half the average time.  One can only speculate whether this case was hastened by a PTO directive to build Alice guidance by expediting appeals deciding § 101 controversies, or because of the particular Board section to which the appeal was assigned and the workload thereof, or because of the identity of the real party in interest (IBM) and the volume of applications filed by that particular assignee.  Whatever the reason for the favoritism (if any), the appellants got a good deal with this appeal, only waiting about twice as long as they would have for another Office action.

We're not done yet with looking at improvement argument cases, so stay tuned for more.

Monday, April 9, 2018

Radar-based target determination method claims saved from Alice by improvement arguments at the PTAB



Takeaway: Viewing the claims as representing an improvement upon technology that uses synthetic aperture radar imaging to determine the position of a target at great distances, the PTAB reversed Alice rejections that had found claims to be directed to patent-ineligible subject matter.  The broadest claim was what could be called a "pure software" claim, consisting solely of "determining" steps taking place inside a computer processor.

Details:


Ex parte Benninghofen

Appeal No. 2016-002156; Application No. 13/380,397; Tech. Center 3600
Decided: Oct. 16, 2017

The application on appeal described a method for determining the geographic coordinates of pixels in synthetic-aperture radar images.  A representative claim on appeal read:

5.     A method, comprising:
        determining, by a processor of an airborne device, geographic coordinates of corresponding pixels of a target from first and second digital synthetic aperture radar (SAR) images by capturing, by the processor of the airborne device, the first and second SAR images in a form of slant range images;
        determining, by the processor of the airborne device, a recording position of the respective first and second SAR images;
        determining, by the processor of the airborne device, a distance between a corresponding resolution cell on a ground and the respective recording position of the respective first and second SAR images using coordinates of the corresponding pixels of the target in the first and second SAR images and corresponding range gates; and
        determining, by the processor of the airborne device using the determined distances and associated recording positions of the first and second SAR images, the geographic coordinates of the corresponding pixels of the target in the first and second SAR images by producing, by the processor of the airborne device, a first and second sphere for the first and second SAR images using the determined distances and associated recording positions of the first and second SAR images; and
        determining, by the processor of the airborne device, the geographic coordinates of the corresponding pixels of the target as a common intersection of the first and second spheres with the WGS84 ellipsoid.
SAR is a form of radar used to acquire high-resolution landscape data from aircraft or spacecraft using comparatively small physical antennas.  Range gates appear to refer to the distances away from the SAR antenna at which are located resolution cells on the ground that correspond to the center of the SAR slant range images.  WGS 84, the 1984 World Geodetic System standard, is the reference coordinate system used by the Global Positioning System (GPS), and its reference ellipsoid is a mathematically defined surface that approximates the geoid, i.e., the truer figure of the Earth.  Thus, in essence, the application provides a way of matching SAR-sourced image pixels to geographic coordinates.  The eight-page written description contains several of what appear to be basic Euclidean distance formulas, and is accompanied by seven drawings of basic geometric diagrams.

In a § 101 rejection, the examiner alleged the claims to be abstract since they "employ mathematical relationships/formulas to determine the geographic coordinates of the corresponding pixels of the target."  The examiner found that the claims did not supply "significantly more" under the second step of the Alice framework because they required no more than a generic computer, in the form of the recited airborne device, "to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry."


The applicants conducted several examiner interviews and filed an after-final response, arguing that "the claims recite significantly more than mere computer implementation of an abstract idea and the ordered combination of steps improves the functioning of a processor itself."  The claim 5 method, applicants asserted, "determines SAR image recording positions and distances based on the determined recording positions, and then uses this information to transform SAR images into first and second spheres, which are then used with a WGS84 ellipsoid to determine geographic coordinates of pixels in an image. Thus, the claims go beyond merely retrieving and combining data."  The applicants further posited that the sole independent claim

improves the overall functioning of a processor because it is able to determine geographic coordinates in an image in a much less processor intensive manner than other techniques. Specifically, . . . the prior art cited to reject the claims [in other art-based rejections] determines geographic coordinates using interferomic SAR (InSAR or IFSAR), which determines phase differences between of master and slave SAR images to generate an interferogram characterizing topographic information.  Obtaining the master and slave images requires the use of a diplexer because obtaining the images requires one transmission antenna and two receiving antennas, which significantly increases the required processing power. Further, the present invention avoids the additional processing required to generate the interferogram and thus improves the overall operation of the processor used for determining geographic coordinates of pixels of a target.
(Emphasis added.)  When the examiner maintained the § 101 rejection, the applicants filed a pre-appeal conference request, arguing that, under the first step of the Alice framework, their claimed method
involves capturing images in which the target is located, which is not an algorithm and is not abstract. The method also involves determining a recording position of the images, which reflects real-world geographic coordinates, and is not an algorithm and is not abstract.  The method further involves determining a distance between a resolution cell on the ground and the recording positions, which is not abstract.
The conference request also repeated the "significantly more" argument from the after-final response.  The conference panel was not persuaded.

In their appeal brief, the appellants argued, among the many unavailing arguments presented, that the data gathering steps of the claim could not be performed by the human mind.  However, they also repeated their inchoate improvement argument, asserting that the claimed method "is able to determine geographic coordinates in an image in a much less processor intensive manner, and with less error."  The appellants were also able to point to support in their specification for a new assertion that the rejected independent claim "improves upon the technical field of position determination with SAR images by reducing error in the known techniques".

Answering the argument that the conventional pre-solution steps could not be performed in the human mind, the examiner cited CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), for the proposition that mere data-gathering steps cannot make an otherwise nonstatutory claim statutory.  The examiner found the processor in the airborne device not to qualify for "significantly more."  The examiner did not address the improvement arguments in the answer brief, perhaps unsurprisingly, since Enfish and McRO were yet to be decided.  The appellants filed a reply brief, but without anything in the way of new or expanded argument, so the case went to the Board, where the panel opined:
With respect to computer-enabled claimed subject matter, it is helpful to determine whether the claims at issue may readily be understood as simply adding conventional computer components to well-known business practices or not.  The question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or [by contrast] are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”
(Citations omitted.)  The Board noted that in Enfish, the Federal Circuit "found that the 'plain focus of the claims' there was on 'an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.'"  The Board thus held the claimed invention to be patent-eligible subject matter as "'an improvement upon technology that uses SAR image to determine the position of a target at great distances,' thus providing a specific improvement in computer capabilities".  Quoting the appellants' arguments, the Board noted that "it does not appear that [the] claims simply add conventional computer components to an otherwise known practice, or invoke computer components merely as a tool to implement an otherwise abstract idea", and reversed the § 101 rejection.

My two cents:


This post is fourth in a series discussing how improvement arguments have saved the day for appellants facing Alice rejections.  The original post predicted that such arguments will soon be on the ascendant as the weapon of choice in combating rejections alleging that claims are directed to abstract ideas, and gave a few relevant practice tips.  Cases like this one make it look easy.  Although the examiner was obstinate that the claims, which, at their broadest, were limited solely to data analysis steps, fell squarely within the abstract-idea judicial exception carved out of 35 U.S.C. § 101, the Board was easily persuaded that the claims did not tie up an abstract idea and reversed the rejection.  The Board did not, for example, require the appellants to prove with quantitative data that the claimed method reduced processor effort and resulted in less error, as asserted in their arguments.  Nor even did the Board require the appellants to provide detailed reasoning showing why such improvements were inherent to the method.  The appellants' arguments look conclusory, but they were enough here, in part, probably, because the examiner did nothing to address them, despite full opportunity (unlike in the case discussed last week, in which the arguments were fleshed out only in the reply brief).


It's difficult to make sense of the applicants' "significantly more" argument as presented in their after-final response.  It is not surprising that the examiner was not persuaded by the applicants' citing to a series of data collection and processing steps followed by a conclusory assertion that "the claims go beyond merely retrieving and combining data."  The difficulty of formulating persuasive Alice second-step arguments in claims that more or less amount to pure software is one reason for the appeal of improvement arguments, which can apply even at step one.


Because the analysis is so thin on all sides, it's difficult to pinpoint why this improvement argument won, or if it would have won if challenged by the examiner.  Likely, in absence of more detailed Supreme Court guidance, a lot of § 101 thinking is still "I know it when I see it."  The improvement argument succeeded in this case where traditional "significantly more" arguments would probably not have been persuasive, since all of the recited or implied features outside the abstract idea itself were conventional components: an SAR sensor, a computer processor.

Stay tuned as we continue to look at how improvement arguments can prevail over Alice rejections of software claims.

Monday, April 2, 2018

Slots o' Fun: Reply brief improvement arguments rescue claims on networked casino game presentation control from Alice rejections



Takeaway: Finding improvement arguments set forth in a reply brief to be persuasive, the Patent Board reversed Alice rejections of claims directed to controlling content presentation on banks of networked casino game machines (the better to attract your attention to all those flashing lights and screens when you set foot in the casino).

Details:


Ex parte Greenberg

Appeal No. 2016-006337; Application No. 13/382,783; Tech. Center 3700
Decided: Sep. 29, 2017

A representative claim on appeal read:

1.     A computer-implemented method of operating a gaming system primarily dedicated to providing at least one casino wagering game, the gaming system including a plurality of wagering game machines and one or more controllers, the method comprising:
        selecting, by one or more processors of the one or more controllers, a plurality of content presentation devices for presentation of a gaming effect, wherein the plurality of content presentation devices comprise video, sound production or lighting devices associated with a plurality of wagering game machines, wherein each of the plurality of content presentation devices has an identifier, and wherein a portion of the gaming effect is configured to be synchronized across the plurality of content presentation devices and the plurality of wagering game  machines, and wherein the portion of the gaming effect is presented without interruption via the plurality of content presentation devices during a time interval;
        receiving, into a non-transitory machine-readable medium coupled to the one or more content controllers, presentation status information for at least one of the plurality of content presentation devices, wherein the presentation status indicates a state of availability of the at least one of the video, sound production or lighting devices;
        determining, by the one or more controllers, based on the presentation status information, that the at least one of the plurality of content presentation devices is unavailable to present the portion of the gaming effect during the time interval; and
        utilizing, by the one or more processors of the one or more controllers, the presentation status information and the identifier for each of the plurality of content presentation devices to generate a transmission schedule in the non-transitory machine-readable medium, that synchronizes timing of transmissions of content control data for the gaming effect to the plurality of content presentation devices, wherein the transmission schedule is configured to schedule content control data to be sent to eligible content presentation devices using the identifier for each eligible content presentation device of the eligible content presentation devices, and wherein the transmission schedule omits the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect based, at least in part, on the presentation status information and the identifier of the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect.
(Emphasis added.)

The application was filed by inventors for WMS Gaming, a subsidiary of WMS industries, then the third-largest manufacturer of slot machines.  The disclosure explains that since "players are likely to be attracted to the most entertaining and exciting machines . . . there is a continuing need for wagering game machine manufacturers to continuously develop . . . gaming enhancements that will attract frequent play."  To this end, game presentation features such as sound effects, music, voices, and animation in wagering game systems are provided from various sources to banks of networked gambling machines (e.g., slot machines) and need to be controlled in a coordinated way via the casino network.  In particular, the invention strives to provide a way for bank-wide effects to exclude unavailable machines in the bank from coordinated content presentations.


After the applicants submitted amendments and arguments to overcome anticipation and obviousness rejections, a notice of allowance was issued in July 2014, but the application was withdrawn from issue the following month, before the issue fee could be paid, for reconsideration in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).

Upon reopening of prosecution, the examiner found the claims to be directed to the abstract idea of "determining a transmission plan for a plurality of devices based on determining if the devices are available", and so rejected them as subject-matter ineligible as a judicial exception to § 101.  Under step two of the Alice analysis, the examiner held that the additional elements in the claims amounted "to no more than a recitation of a generic gaming machine and generic computer network including a gaming network", and thus did "not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself."


In the final rejection, the examiner cited to the Internet video ad case of Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), wherein the Federal Circuit found the claims to be directed to an abstract idea, specifically, a method of using advertising as an exchange or currency, on the court's second reconsideration of the case, made with the benefit of the Alice decision.  (The appeals court had twice previously held the claims to be eligible after Supreme Court decisions came down in Bilski v. Kappos, 561 U.S. 593 (2010), see 657 F.3d 1323, and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), see 722 F.3d 1335.)  One of the holdings of Ultramercial was that the mere inclusion of the Internet in a claim would not render an otherwise ineligible claim allowable.  Here, the examiner found that "a network based gaming means is a well-known game concept . . . as much as the use of the Internet within the computer art and therefore would be considered a general purpose computer and not a novel machine or apparatus."  Thus, the examiner found the claims to be "directed to an abstract idea in regards to scheduling machines in a network to carry out a task, if available, which is both well-known and obvious in order to have a task be carried out the machine must be free and available," and, in support of this finding cited to the prior art reference relied upon in the already-overcome anticipation and obviousness rejections.  Even after consideration of the claims' recitations of the changing the communication paths and the inclusion of status identifiers, "applicant's claims are still directed to the abstract idea of determining when to display content on machines based on availability with the only modifications being to which part talks to which part of the system and how the system identifies when a part of the system is busy or how to schedule the transmission.  This does not amount to a significant change over the current gaming network art."


The applicants requested a pre-appeal conference, arguing that, "viewed as a whole, the claims

are not of a scope to broadly pre-empt any of the concepts that the courts have found abstract", such as fundamental economic practices, methods of organizing human activities, idea of themselves, or mathematical relationships or formulas.  The applicants compared and contrasted their claims to claims analyzed in USPTO guidance examples, and concluded that the claims "go far beyond" the alleged abstract idea.  The pre-appeal panel was not persuaded and the applicants appealed.

In the appeal brief, the appellants set forth what has become the standard panoply of typically ineffective arguments: the examiner failed to examine the claims "as a whole"; the claims were lumped into a specious and overbroad category of abstract idea; the rejection did not properly determine what the claims were "directed to".  The appellants again argued that the claims did not tie up any concept that courts have identified as abstract, and that the wagering game machines, gaming network, and other features were not generic and amounted to significantly more.  Finally and most critically, the appeal brief contained the germ of an improvement argument, asserting that the claims were "directed to an improvement in a specific technology or technical field."


The examiner answered that "the method performed is a well-known and well-understood one wherein a check should be made to determine if a machine is available before assigning a task thereby insuring that the assignment is either carried out or not interfered with."  Moreover, "a gaming machine is a broad and generic category of computers and includes many well-known embodiments and therefore is still a generic machine."  Further, "just adding a network or computer to perform the basic abstract idea does not add significantly more since it is well-understood to automate a process using a network to communicate the automation so as to avoid assigning personal [sic] to perform the task which makes the operation more expensive."  The examiner referred in passing to the case of Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).


In the reply brief, the appellants protested that the claims found to be abstract in Planet Bingo were directed to solving a tampering problem and minimizing security risks during bingo ticket purchases, which the Federal Circuit found similar to the consumer-transaction risk hedging held abstract in Bilski, but which, according to the appellants, were nothing like "determining a transmission plan" (the allegedly abstract idea to which the examiner found the appellants' claims were directed).


More significantly, as happened in the Vortman case discussed last week, by the time of the reply brief, the Federal Circuit had decided Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), holding software claims directed to a self-referential table subject-matter eligible under step one of Alice framework.  The appellants seized on the new holding, arguing that the alleged abstract idea was untethered from the claim language, and explicating an improvement argument:

The claimed invention is a specific implementation of an improvement in the functioning of a computer system by allowing a controller to synchronize the presentation of a gaming effect on a plurality of presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. . . . [It] does not comprise "simply adding conventional computer components to well-known business practices."  . . . [G]ame developers can face the problem that controlling content from multiple different sources can be challenging.  . . . [The claims] recite a solution implemented by a controller that synchronizes the presentation of a gaming effect on a plurality of available presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. Because the controller implements the solution, the game developer is freed from developing all of the software necessary to control the presentation.  Further, the functioning of the gaming system is improved by providing gaming effects that are presented without interruption by using available presentation devices and omitting unavailable presentation devices.
(Emphasis added.)

With the further benefit of the Federal Circuit's approval of software claims as a patent-eligible improvement in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the PTAB panel agreed
that the claims on appeal are directed to a technological improvement rather than an abstract idea such as organizing human activity or a fundamental economic practice.  The claims employ status information and identifiers for content presentation devices to generate a transmission schedule to send to a plurality of content presentation devices in order to synchronize a gaming effect across a plurality of content presentation devices in a specific time interval.  Although the process claimed for synchronizing the gaming effect is perhaps simple and logical, the Examiner does not provide evidence that the claimed process is merely the automation of the same process previously performed by a human.
(Emphasis added.)  The Board thus reversed the § 101 rejections.

My two cents:


The examiner's final rejection and answer brief provided a judicial exception analysis of the type upheld by the Board in countless other cases.  The appellants won in this case thanks to the improvement arguments introduced in their reply brief.  This blog's recent post forecasting the growing importance of improvement arguments in overcoming Alice rejections set out some practice tips on when and how best to use such arguments.  This appeal win illustrates some of those tips in action.


The appellants made it explicit that they were arguing an asserted improvement (practice tip #3) and had the prescience or good luck to include at least the beginnings of an improvement argument in the appeal brief.  (It is not clear that the timing of the decision in Enfish would have been good enough cause to skirt the general rule that arguments not presented in the appeal brief are waived.  See Ex parte Borden, No. 2008-004312 (B.P.A.I. Jan. 7, 2010) (informative); Ex parte Nakashima, 93 USPQ2d 1834, 1840-41 (B.P.A.I. Jan. 7, 2010) (informative).)  They appropriately rebutted examiner efforts to characterize the claims as ineligibly directed to solving "an entrepreneurial rather than a technological" problem, to use the language of the Ultramercial case cited by the examiner (practice tip #2).  They explained the problem and were able to point to description in their specification as evidence of the problem, its substantiality, the intent to solve it, and thus the specific improvement rendered (practice tips #2, #4, #5, and #7).  Finally, the appellants had the examiner on record as to the closest prior art and were able to show a difference over that art, having already overcome art-based rejections that relied upon the reference (practice tip #8).

The appellants might also have had a bit of an upper hand over the examiner in this case, given that Enfish was decided between the time of the appeal brief and the reply brief and the examiner did not have the ability to respond to the improvement arguments.  In the time of the old MPEP § 1208.02, the examiner could have withdrawn the case to prosecution to address the improvement argument, but that appears to no longer be the case.  See MPEP § 1208(II) (jurisdiction passes to the Board after filing of a reply brief and the examiner will not "normally" have an opportunity for further argument without a Board remand with instructions to furnish a substitute examiner’s answer).

Next time we'll look at another software case in which the appellants managed to retrieve claims from the jaws of Alice rejections thanks to Board recognition of improvement arguments.

Monday, March 26, 2018

PTAB finds claims directed to tissue volume movement monitoring not ineligible as law of nature, abstract idea

Takeaway: The applicants appealed subject-matter eligibility rejections made under 35 U.S.C. § 101, alleging that the tissue volume monitoring claims were directed to a law of nature and an abstract idea.  Persuaded by the appellants' improvement arguments, the PTAB reversed the rejections, holding that "while using generic and known tracking modalities (such as ultrasound and MRI), [the claimed invention] improves the internal tissue monitoring by using the slower rate modality to adjust parameters of the physical model to predict target volume location, which, in turn, is used to determine a tracking error for deciding when to turn off treatment."

Details:


Ex parte Vortman
Appeal No. 2017-003076; Application No. 13/226,060; Tech. Center 3700
Decided:  Feb. 16, 2018

The application on appeal described methods and systems for continuously monitoring movement of an internal volume of tissue during treatment.  A representative claim on appeal read:
1.     A method of continuously monitoring movement of an internal volume of tissue during treatment thereof, the method comprising the steps of:
        using a physical model of anticipated movement of an internal target volume to predict a target volume location as a function of time;
        continuously and directly tracking the internal target volume during treatment thereof using two tracking modalities, wherein
                the first tracking modality provides initial estimated target volume locations based directly on first image contents of the internal target volume obtained at a first information update rate, and
                the second tracking modality identifies subsequent estimated target locations of the internal target volume based directly on second image contents of the internal target volume obtained at a second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations;
        comparing the initial estimated target locations to the predicted target volume locations to determine a tracking error;
        if the tracking error exceeds a safety threshold, suspending treatment; and
        adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume.
(Emphasis added.)

The examiner found the claims to be directed to a law of nature because 
they contained "nothing more than 'well-understood, routine, conventional activity previously engaged in by researchers in the field."'  The examiner further found the claims to be directed to an abstract idea because "there is no clear transformation of the determination and/or image data," no machine was required to obtain the physical model recited in the claims, and all the steps could be "derived by mind or by hand with writing utensil and writing surface."

In the appeal brief, the appellants argued that the claims' "approach clearly does not occur in nature and has markedly different characteristics compared to any natural phenomenon. Indeed, the subject matter of claim 1 is not even remotely relevant to the concepts that courts have found to be laws of nature (such as an isolated DNA, a correlation that is the consequence of how a certain compound is metabolized by the body, electromagnetism to transmit signals, and the chemical principle underlying the union between fatty elements and water)."  The appellants asserted that the examiner had skipped to the second step of the Alice/Mayo framework without properly analyzing the claims under the first step, i.e., the examiner's attempt to characterize the claims as directed to a law of nature was improper in the first place.

As to the allegation that the claims were directed to an abstract idea, the appellants argued:
[N]o case has held, and the Office's guidelines do not state, that a transformation of image data is necessary for patent eligibility under § 101. Rather, to determine whether the claim contains a judicial exception, the Office's guidelines identify several categories of subject matter that represent "abstract ideas" within the scope of binding judicial precedent: fundamental economic practices, certain methods of organizing human activity, an idea "of itself," and mathematical relationships/formulas. Claim I of the present application recites a method of treatment involving target tracking, i.e., continuously monitoring movement of an internal volume of tissue during treatment using two tracking modalities; this hardly qualifies as an "abstract idea" that is merely being applied. It can hardly be characterized as a fundamental economic practice, a method of organizing human activity, an idea "of itself," or a mathematical relationships/formula, nor can it even be analogized to such concepts. . . . [W]hether or not image data is "transformed" in some way is not germane to the patentability of claim 1, because the claim is not limited to mere acquisition of image data, nor does it recite merely recognizing data within collected data sets or a mental process that "can be performed in the human mind, or by a human using a pen and paper."
The appellants further argued that the recitations of suspension of therapy if necessary and updating the basis on which target tracking occurs amounted to a transformation of the image data.  Finally, noting the criticality of "determin[ing] whether the target volume location during treatment significantly deviates from the predicted target location," appellants threw in a brief improvement argument: "this advantageously allows the treatment to be suspended before the healthy, non-target tissue is damaged. Accordingly, claim 1 provides safety improvements in treatment and contains real-world application" (emphasis added).

In the examiner's answer brief, the examiner argued again that the claims amounted to "nothing more than routine data collection and/or insignificant extra-solution activity."  The examiner alleged that "the abstract idea is a critical aspect of the claimed invention."  The examiner also addressed the improvement argument by arguing that it amounted to mere attorney argument and was not supported by evidence such as experimental data.

By the time of the reply brief, the CAFC had favorably decided the pure-software, "self-referential table" case of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).  The appellants were thus prompted to expand somewhat on their improvement argument, the germ of which had been included in their appeal brief:
[In Enfish,] the Court of Appeals for the Federal Circuit determined that a claimed invention qualified as patentable subject matter under step 1 of the Alice framework because the claims focused on an improvement to computer functionality.  Here, the claims focus on an improvement to medical imaging and require operations on image contents based on tracking modalities. If anything, the present claims recite specialized equipment with even greater specificity than in Enfish.
The appellants also challenged the examiner's assertion that experimental evidence was required to demonstrate that the claims were directed to an improvement:
Characterizing the claimed invention as an improvement for § 101 purposes requires no evidence because the proposition is, in fact, self-evident: paragraph [0006] of the specification explains the challenge encountered during tissue treatment; paragraph [0007] describes the drawbacks of conventional approaches; and paragraph [0009] sets forth an approach utilized in the present application to overcome the treatment challenge while avoiding the drawbacks of conventional approaches. . . . [T]o the extent evidence is needed, it is supplied by the present specification.
After finding that the claims amounted to "significantly more" under the second step of the Alice/Mayo framework, the Board further found the improvement argument to be sufficient to overcome the allegation of subject-matter ineligibility:
The holding in [Enfish] also supports the patent eligibility of the claims. . . . In this case, the claims improve the way the tracking modalities operate in determining the movement of tissue volume to determine when to suspend treatment.  Thus, the claimed subject matter is not merely an algorithm or natural phenomenon, but constitutes an improvement to how tracking systems operate, such as ultrasound and MRI, that improves their ability to monitor tissue movement during treatment.  Thus, unlike the claims in In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016), the claims include a sufficient inventive concept to satisfy § 101.
(Emphasis added.)

My two cents:

I don't want to say the Board got the outcome wrong.  It is my sense that the claims are not directed to an abstract idea under the framework established by the Supreme Court, as elaborated and expounded upon by the Federal Circuit.  But, I think, even if the Board arrived at the right answer, some of their reasoning gets it very wrong indeed.

In my last post, I highlighted the growing importance of improvement arguments, and provided a series of practice tips for successfully rebutting judicial-exception subject-matter eligibility rejections with improvement arguments.  In this and the next few posts, I'll look at recent PTAB decisions in which improvement arguments helped win reversals of Alice rejections.

It's worth noting that the application was filed on an 8-page specification without drawings.  There is no minimum specification length and no statutory requirement for a drawing so long as none are "necessary for the understanding of the subject matter sought to be patented."  35 U.S.C. § 113.  (It's an interesting question whether the absence of any drawing renders an application immune to the annoyance of objections lodged under Rule 83 ("[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims").  However, I note that 35 U.S.C. § 113 and Rule 81(c) appear to authorize the examiner to demand a drawing whenever the "subject matter admits of illustration.")  But a thin description may lead to trouble in prosecution, inasmuch as it can give the practitioner very little to lean on when the going gets tough.  In my last post, I discussed the desirability, when making improvement arguments, of underscoring with sufficient explanation the real-world benefits of the improvement (practice tip #5), providing evidence to support the improvement (practice tip #7), and carefully identifying the previous state of the technology field (practice tip #8).  Evidently, the specification was ample enough in this case to provide the needed explanations and evidence.  But if any of the information necessary to make the improvement argument had been culled from the spec in the drafting phase, it could have complicated matters for the prosecuting practitioners, who might have been challenged to provide documentary or testimonial evidence to support their arguments.

But there's a bigger problem here, one that was not addressed by any party or the Board on appeal.  The conditional clause near the end of claim 1, directing the suspending of treatment "if the tracking error exceeds a safety threshold," is properly afforded no patentable weight when considering the patentability of the claim, either under an eligibility rejection or an art-based one.  See MPEP § 2103(I)(C), 4th paragraph, 4th sentence: "Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation."  See also Ex parte Schulhauser, No. 2013-007847 (P.T.A.B. Apr. 26, 2016) (affirming obviousness rejections where a broadest reasonable reading of the claim excised method steps that only needed to be performed if certain conditions precedent are met, and holding that "[a] proper interpretation of claim language, under the broadest reasonable interpretation of a claim during prosecution, must construe the claim language in a way that at least encompasses the broadest interpretation of the claim language for purposes of infringement."); In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006) (optional elements do not narrow claims as they can be omitted).

In the last post, I discussed the importance of the scope of the improvement argument matching the scope of the claim (practice tip #6).  Here, because the claim reads as much on a method that does not suspend treatment as one that does, and because the improvement argument leans heavily on the functionality of this clause that might as well be stricken from the claim (see, e.g., the boldfaced portions of the appellant argument and the decision on appeal, quoted above), there is a potentially crippling scope mismatch between what is actually claimed and what it is argued that is claimed.  Consequently, the applicability of the improvement argument might have been more limited than the examiner, appellants, and Board realized.

It is not clear whether, absent an effective improvement argument, the Board would have given the appellants the win based on their Alice step 2 arguments ("[W]e agree with Appellants that the claim as a whole is significantly more than the ineligible concepts.").  This is because the Board's step 2 analysis seems to rely on the appellants' improvement arguments: "We are persuaded that the claimed
method . . . improves the internal tissue monitoring" (emphasis in original).  As the Federal Circuit has held in various cases, improvement arguments are applicable at either step of the framework.

So, although an improvement argument won this case, perhaps it shouldn't have, at least not as argued and decided, and the Board likely erred in not realizing that a conditional limitation is no limitation.  Possibly, the appellants could have avoided this issue with more artful drafting; "based on the tracking error exceeding a safety threshold, suspending treatment" gets the job done without the complication of patentably weightless conditional claiming language.

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.

Details:


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. Hotels.com, 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.