Takeaway: The argument that an Alice rejection failed to follow a USPTO requirement to identify abstract ideas by way of comparison to concepts already found by the courts to be abstract is not a successful argument before the Patent Trial and Appeal Board, because the case law on which Office guidance is based does not place the same requirements on examiners as the guidance does. The case for PTAB enforcement of the new Berkheimer memo may be stronger.
Details:
Ex parte Burchfield
Appeal No. 2016-007437; Application No. 12/016,280; Tech. Center 3600
Decided: Apr. 19, 2018
Ex parte Dominguez
Appeal No. 2016-008588; Application No. 12/903 ,916; Tech. Center 3600
Decided: Apr. 3, 2018
Ex parte Hammock
Appeal No. 2016-007736; Application No. 14/042,379; Tech. Center 3600
Decided: Apr. 3, 2018
Ex parte Hwang
Appeal No. 2017-007960; Application No. 13/809,835; Tech. Center 2600
Decided: Mar. 20, 2018
Ex parte Austin
Appeal No. 2016-004640; Application No. 12/787,721; Tech. Center 3600
Decided: Jan. 11, 2018
Dozens of Board decisions, the above listing including only a few among the more recent, contain nearly identical language redressing appellant arguments that an examiner's subject-matter eligibility rejections fail to follow USPTO guidance requiring examiners to liken the alleged abstract idea to which the claims are said to be directed to concepts already found by the courts to be abstract. It suffices to quote from two such cases:
Austin:
Appellants first argue that the rejection under § 101 cannot be sustained because the Examiner has failed to comply with the USPTO’s “July 2015 Update on Subject Matter Eligibility” . . . and, more particularly, because the Examiner failed in the Final Office Action to “explain how the alleged abstract idea recited in the invention is similar to one of the concepts previously identified [as patent-ineligible] by the courts” . . . . The July 2015 Update instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract, and explains that “[t]his discussion is meant to . . . ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea” . . . . That argument is not persuasive at least because an examiner’s failure to follow the Director’s guidance is appealable only to the extent that the examiner has failed to follow the relevant statutes or case law. To the extent the Director’s guidance goes beyond the case law and is more restrictive on the examiner than the case law, the failure of the examiner to follow those added restrictions is a matter for petition to the Director. We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.
(Emphasis added, citations omitted, and hyperlink and footnote text placed inline.)
Hammock:
Appellants also argue that the § 101 rejection cannot be sustained because the Examiner has not identified a case in which the courts have identified a similar concept as an abstract idea . . . . Yet, to the extent Appellants maintain that the § 101 rejection must be withdrawn because the Examiner has failed to comply with USPTO guidelines, i.e., the USPTO's May 4, 2016 Memorandum, "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection," we note that an examiner's failure to follow the Director's guidance is appealable only to the extent that the examiner has failed to follow the statutes or case law. To the extent the Director's guidance goes beyond the case law and is more restrictive on the Examiner than the case law, the failure of the Examiner to follow those added restrictions is a matter for petition to the Director. We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.
(Emphasis added and citations omitted.)
My two cents: Courts have long held abstract ideas to be unpatentable, and in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court set out a framework for determining whether patent claims should be rejected as abstract. As the Federal Circuit has pointed out, because there is no definition of "abstract idea" for the purposes of subject-matter eligibility analysis of claims with regard to that judicial exception to 35 U.S.C. § 101, we are resigned to compare each new case to prior cases:
The Supreme Court has not established a definitive rule to determine what constitutes an "abstract idea" sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (internal citation omitted).
Following the Enfish decision, the USPTO memorandum "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection", issued May 4, 2016, turned the Federal Circuit's lament into USPTO policy by requiring examiners to explain why the identified abstract idea corresponds to a concept that the courts have previously identified as abstract:
[W]hen an examiner determines that a claim is directed to an abstract idea
(Step 2A), the rejection should identify the abstract idea as it is recited (i.e., set forth or
described) in the claim and explain why it corresponds to a concept that the courts have
identified as an abstract idea.
...
When the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea. See, for example, the concepts identified on the July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet, page 2. Citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution. Examiners should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context. Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas. Examiners are reminded that a chart of court decisions is available on the USPTO's Internet Web site.
However, as shown by the above Board cases, the options for applicant enforcement of the Enfish memo are few and poor. When examiners fail to follow the official guidance, applicants can complain to supervisors, TC directors, the ombudman, or, by way of petition, to the same supervisors or TC directors and ultimately the Office of Petitions, but applicants cannot go to the Board. None of the available options toll the prosecution clock, meaning that an application can go abandoned while an applicant fights a procedural battle that may have little bearing on the ultimate patentability of the claims.
On April 19, 2018, the USPTO released a new Alice-rejection-related guidance memo, following the decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Berkheimer held that whether a particular technology is well-understood, routine, and conventional is a question of fact within the legal determination of subject-matter ineligibility, and one that goes beyond what was simply known in the prior art. "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." 881 F.3d at 1369. In a nutshell, the Berkheimer memo instructs that examiners must provide record evidence supporting allegations that claim elements or ordered combinations of elements amount only to "well-understood, routine, and conventional" features that thus fail to add "significantly more" to the claims than the abstract idea to which they are alleged to be directed. Such record evidence can be based on applicant admissions, prior court decisions, or findings made from cited publications, but "cannot be based only on the fact that the specification is silent with respect to describing such element" and cannot be shown "merely [by] finding the additional element in a single patent or published application . . . unless the patent or published application demonstrates that the additional element[s] are widely prevalent or in common use in the relevant field."
There are generally good reasons for making USPTO policy dictating what an examiner must or must not do when setting forth a rejection procedurally enforceable at the Patent Trial and Appeal Board, but those reasons may be weaker when it comes to the first step of the Alice framework. To be sure, forcing examiners to adhere to USPTO policy provides safeguards to applicant procedural due process and helps to ensure that USPTO decisions are not arbitrary, capricious, or discriminatory. Additionally, the Board considers itself to be a reviewing body, and not a place of initial examination; as such, the Board ought to free itself of reviewing abstract-idea determinations made at Alice step one that do not comport with USPTO guidance, and should just summarily reverse such determinations. Austin, Hammock, and other decisions show that this is not the case, however, nor is this a particularly new position taken by the Board, see. e.g., Ex parte Lyons, No. 2009-007300 (B.P.A.I. Dec. 13, 2010) ("Failure to comply with guidance is not per se appealable to the Board, as the jurisdiction of the Board is limited to review of rejections rather than the conduct of the examination."), even if exceptions can be found in the appeal records.
But the appellants lost in those cases because they were not able to show binding precedential support for their suppositions as to what was required during examination. The Federal Circuit's Berkheimer decision, however, provides more definite precedential support for the content of the Berkheimer memo than Enfish does for the May 2016 Enfish memo. For instance, Berkheimer states in no uncertain terms that "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." 881 F.3d at 1369. As such, applicants may have more success in asking the Board to uphold the procedural requirements imposed on examiners by the Berkheimer memo, at Alice step two, than they have had in trying to enforce the July 2015 and May 2016 guidance memos, relating to step one of the Alice framework.
Takeaway: The Patent Board reversed § 101 Alice rejections of commercial transaction processing claims when the claims relied on a "time cell" and thus presented an improvement of the "relevant technology."
Details:
Ex parte Berstis
Appeal No. 2016-007050; Application No. 12/366,951; Tech. Center 3600
Decided: Mar. 12, 2018
The application is a continuation-in-part with priority to a line of applications related to a "time cell," basically a charge storage element with a known electrostatic discharge profile by which an amount of time elapsed since the initial charge can be determined, and the use of said time cell in what essentially amount to self-expiring coupons. A representative claim on appeal read:
16. A method for processing a commercial transaction using data processing devices, the method comprising:
determining a state of a time cell that is associated with a commercial transaction that has been at least partially performed on a first data processing device at a time prior to a current time;
generating, at a second data processing device, a first time value that represents when the time cell was programmed at the time prior to the current time, based on the determined state of the time cell; and
processing information about the commercial transaction using the first time value to represent when the commercial transaction occurred at the time prior to the current time,
wherein:
the time cell is an electrical device having an insulating medium and an electrostatic charge storage element that is programmed by giving the electrostatic charge storage element a desired electrical potential,
the time cell discharges electrostatic charge from the electrostatic charge storage element through the insulating medium at a predetermined rate of discharge, and
determining the state of the time cell comprises detecting a current electrostatic charge stored in the electrostatic charge storage element.
(Emphasis added.)
The examiner rejected the claims as
directed to the abstract idea of processing information about a commercial transaction based on the timing of the commercial transaction. Analyzing a commercial transaction is a certain method of organization human activity related to commercial activity, an example of an abstract idea referenced in Alice Corp.
Under the second step of the Alice framework, the examiner still found the claims to be subject matter ineligible:
The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than a mere instruction to apply the abstract idea to a time cell that uses electrostatic physics. Viewed as a whole, these additional claim element(s) do 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 appeal brief, the appellants complained that the examiner had overgeneralized the subject matter, and submitted that the claims were
directed to mechanisms . . . for processing information about a commercial transaction that was at least partially performed on a first data processing device at a prior time based on a time value, generated at a second data processing device, that represents when an electrical device (time cell) was programmed at the prior time of the commercial transaction, based on a determined state of the time cell, where the state of the time cell is determined by detecting a current electrostatic charge stored in an electrostatic charge storage element of the time cell, and where the time cell has the physical configuration set forth in the claims. . . . [T]he claims are not directed to only [the identified] abstract idea and are not attempting to preempt every possible way of processing information about a commercial transaction based on the timing of the commercial transaction. To the contrary, the very recitation of the operation of processing information about a commercial transaction, at least partially performed on a first data processing device, is tied to the generation of the first time value, at a second data processing device, which is generated based on the determined state of the electrical device (time cell) which is determined at least by detecting a current electrostatic charge stored in the electrostatic charge storage element. Thus, the claims are clearly directed to a specific application and implementation of the concept of processing information about a commercial transaction with regard to a specific type of electrical device, referred to as a time cell, and specifically directed to mechanisms that detect the electrostatic state of the time cell as a mechanism for processing the commercial transaction.
The appellants further argued that the claims involved "a synergistic interplay between tangible, material elements", that the claims had not been properly examined as a whole, and that they did not relate to fundamental economic practices, methods of organizing human activities, abstract ideas of themselves, or mathematical relationships/formulas.
If the method claim recites operations that can only be performed within technology, then the method claim does not recite an abstract idea. That is, "inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act" (see Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 869 (Fed. Cir. 2010)). In other words, if the claims recite specific applications or improvements to technologies, as in the present case, then the abstract concepts are not being preempted or "tied up" but rather, the claims are directed to a specific application of the abstract concepts which is statutory.
(Emphasis added.) Reviewing the specific time cell-related claim features, the claims were
clearly directed to an improvement to technology and [are] clearly not attempting to "tie up" or preempt the alleged abstract idea of "processing information about a commercial transaction based on the timing of the commercial transaction" but rather a specific mechanism for processing information about a commercial transaction that involves the programming of a time cell at the time the commercial transaction was at least partially performed, and detecting the state of the time cell at a second data processing device to thereby process information about the commercial transaction.
(Emphasis altered.)
The examiner answered that the claims' "limitations that describe the electrostatic physics behind the use of a time cell . . . merely link the use of an abstract idea to a particular technological environment: the field of time cells" and that "the aforementioned limitations do not improve the technical field of time cells." In the examiner's view, the claims also failed to improve a technical field, because "[d]ispensing an article of manufacture by a first data processing device is akin to dispensing a coupon through a vending machine". Finally, the examiner cited the old and discredited case of Ex parte Pfeiffer, 135 USPQ 31 (B.P.A.I. 1961), for the proposition that structural limitations (in this case, the structure of the time cell) carry no patentable weight in method claims.
In their reply brief, the appellants cited USPTO guidance issued in the wake of Enfish decision and argued that the claims were directed not to an abstract idea but to
an improvement to computer based processing of commercial transactions which is rooted in computer technology and directed to solving a problem in the computer arts by providing a new and non-obvious (as indicated by the fact that there is no prior art rejection against the present claims) mechanism that operates in conjunction with a time cell. Moreover, the present specification clearly sets forth numerous improvements made by the claimed invention with regard to processing commercial transactions using mechanisms that operate on and with time cells.
(Emphasis added.)
The Board found that "using a non-volatile memory cell . . . which does not require a battery to measure time is an inventive concept that provides a specific means or method that improves the relevant technology" and that the recited time cell was a particular machine, "not a generic machine, because, unlike a generic computer, which can perform many different functions when programmed, the recited 'time cell' can only be used for a single, dedicated purpose (measuring a predetermined passage of time as a function of the decay over time of an electrical charge)." Moreover, the provided time measurement could not be done as a mental step. The Board thus found the time cell features to lend the claims "significantly more" than the identified abstract idea and reversed the § 101 rejections.
My two cents:
This post is the sixth in a series about improvement arguments beating Alice rejections at the Patent Board. "Coupon" would seem to be patent profanity if one wants to avoid an Alice rejection. See, e.g., Ex parte MacNeille, No. 2016-004411 (P.T.A.B. Mar. 28, 2018). Here, although the claims do not use the word "coupon," the examiner likened the claims to coupon-related technologies, leading the applicants to protest that the USPTO had issued coupon-related patents in the past and thus presumably found them to be statutory ("see U.S. Patent Nos. 5,039,848; 6,648,761; 9,361,606, etc."). "But it worked in the past" is not an argument that carries much weight at the Board given the directive to consider each case on its own merits. See, e.g., Ex parte Heinrich, No. 2016-002486 (P.T.A.B. Feb. 27, 2018), citing In re Gyurik, 596 F.2d 1012, 1016 n.15 (C.C.P.A. 1979). It seems instead that the Board engaged in a much more variegated analysis, looking at the machine-or-transformation test and crediting or modifying the Enfish-based improvement arguments made by the appellant.
Although the application and its parents take great pains not to say so, the "time cell" of the invention sounds like it reads on a leaky capacitor, which is to say, any practical capacitor, of known discharge profile, that can be periodically sampled to determine remaining charge. If so, it is not something new; see, e.g., U.S. patent No. 5,760,644, "Integrated circuit timer function using natural decay of charge stored in a dielectric" (priority date 1995, approximately a decade before the priority dates involved in this application). If a time cell is old, one can understand why an examiner would take the position that it could not offer "significantly" more under the second step of the Alice framework, but even so, the Board found such novelty or lack thereof irrelevant in the § 101 consideration:
[E]ven if time measurement devices are notoriously well known in the art, this has no bearing upon our analysis under § 101. The Supreme Court guides: "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Our reviewing court further emphasizes: "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (emphasis added).
Citing a Board decision that briefly appeared in an old revision of the MPEP (see § 2117), the examiner argued that structural elements carry no patentable weight in method claims, but if the Board declined even to address that argument, it may have been because they discarded it many times in the past. See, e.g., Ex parte Sigler, No. 2016-001256 (P.T.A.B. Sep. 19, 2017); Ex parte Paul, No. 2011-006827 (P.T.A.B. Mar. 7, 2013); Ex parte Lind, No. 2010-005289 (B.P.A.I. Aug. 29, 2012); Ex parte Tuma, No. 2006-002308 (B.P.A.I. Sep. 26, 2006); Ex parte Holderness, No. 1998-000553 (B.P.A.I. Mar. 13, 2001); Ex parte Zeigler, No. 1996-002718 (B.P.A.I. May 18, 2000); Ex parte Kirkland, No. 1997-000172 (B.P.A.I. Aug. 25, 1998). However, the Board did drop a footnote instructing the examiner to consider whether the claims were indefinite under § 112 and MPEP § 2173.05(p)(II) as hybrid claims reciting an apparatus and method steps. I don't think mere recital of structure renders a method claim a hybrid claim, since, at bottom, the issue is whether the claim language creates confusion is as to when direct infringement occurs, and that would not seem to be the case here or in most method claims that describe what structural materials and tools are involved in the performance of the method.
The Board did not specify in their decision what "relevant technology" the claimed invention improves, but presumably the relevant technology is that of electronic couponing, or commercial transactions more generally. As noted in a previous post with practice tips for defeating Alice rejections, it can be important in making improvement arguments to state what the previous state of the technology field and how the claims at issue offer both a clear difference and a significant improvement over the state of the art. Defining the previous state of the technology field may not have been particularly important in this case because the cited prior art, and the claims' overcoming rejections in view of that art, inferentially defined the previous state of the technology field.
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 technology. See 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.
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.
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 Enfish, McRO, 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.
