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The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility published on 21 Comments on The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

In December 2014, the USPTO released its Interim Guidance on Patent Subject Matter Eligibility, which summarized the sprawling case law of 35 USC 101 into examiner instructions. The 2014 Interim Guidance was a cautious document, tracking closely with court opinions, but lacking insight into important questions that the courts had not yet answered. Regarding the critical issue of the types of claims that remain patent-eligible under 35 USC 101, especially for computer-related inventions, this material provided little comfort.

In late July, the USPTO released an update to the Interim Guidance with a remarkably different tone. Undaunted by the unchecked growth of invalidity decisions and very few findings of patent-eligible claims, the July update presents a set of hypothetical claims, characterizes these claims as patent-eligible, and provides an extensive analysis under Alice that supports this finding. Through this bold step, the USPTO fills crucial gaps in 35 USC 101 that the courts have failed and even refused to mend – and although the courts’ conformity with these opinions is by no means guaranteed, the July update adds much-needed balance to the discussion of subject matter eligibility.


1. The Conservative Tone of the December 2014 Interim Guidance

In their continuing efforts to define subject matter eligibility, the courts enjoy an abundance of freedom. Judges can be choosy in their review of cases and the reach of their opinions; they can arbitrarily change their minds about the law, and can fabricate new legal theories and requirements out of thin air; they can even issue decisions that conflict with their own precedent by marking such opinions “non-precedential.” Since the courts do not answer to constituents, clients, or industry – only to other courts – they can disregard the practical consequences of their decisions, retreating behind the mantra: “we are merely the interpreters of the law and policy decided upon by the legislature.” 1

By contrast, the USPTO bears an overwhelming burden that is fraught with responsibility. Each of the 300,000 patents that the USPTO issued in FY 2014 is the issuance of a government-backed property right. Each rejected application (approximately the same number per year) is a legal decision to withhold a property right, often relegating an invention to the public domain, freely exposed to the paying applicant’s competitors and ripe for copying. And every decision is reviewable not only by a complex judicial apparatus – but by a public body that, at present, views the USPTO’s determinations critically by default.

Given its footing, when the USPTO released its Interim Guidance for Patent Subject Matter Eligibility last year – barely six months after Alice – it was unsurprising that the content of this material was exceptionally conservative. The initial release of the Interim Guidance was a straightforward summary of the emerging case law, consolidating the sprawling analysis provided by Alice and Mayo into a flowchart, with each box consolidating the courts’ statements about a particular piece of the 101 puzzle. This analysis was reinforced by an impressive compendium of 21 cases that define the courts’ interpretation of subject-matter eligibility, ranging from O’Reilly v. Morse (1853) to post-Alice cases. Little could be found in the Interim Guidance that was not derived directly from a court opinion.

While fitting for the circumstances, the conservative tone of the Interim Guidance limited its usefulness. Although court opinions can (and many do!) recite platitudes about the Information Age and hopeful speculation about the availability of patents for valuable software inventions, the USPTO bears the burden of stating which inventions those are. However, the compendium of court decisions included only a few examples of patent-eligible inventions in computing technologies (SiRF Tech and Research Corp. Tech., both pre-Alice, as well as DDR Holdings) set against the expansive rhetoric of Alice. As a result, examiners – and by extension, applicants and the general public – could find little support in the Interim Guidance to inform the validation of claims for computer-related inventions under 35 USC 101.

To its credit, the co-authors of the Interim Guidance – Drew Hirshfeld and Raul Tamayo, as senior members of the USPTO Office of Patent Legal Administration (OPLA) – have been publicly candid about their limitations in authoring the 2014 Interim Guidance. When members of the public expressed anxiety over the important questions that the Interim Guidance failed to answer, Drew and Raul validated this frustration – acknowledging a shared distress over the courts’ lopsided decisions in this area. 2 And for the complaints that the USPTO could address through procedural changes (such as requiring examiners to explain their Alice rationale in office actions, rather than only the result), Drew and Raul pledged to address these issues in future versions of the Interim Guidance.

In January 2015, the USPTO supplemented the Interim Guidance with some examples of claims in the computing arts that were patent-eligible and patent-ineligible. The “Abstract Idea Examples” Update presented four hypothetical claims, each with a discussion of the Alice analysis leading to a conclusion of patent eligibility. However, three of the examples were lightly adapted from DDR Holdings, Research Corporation Technologies and SiRF Technology – all of which had been covered in the original Interim Guidance – while the fourth was carefully limited to a specialized area of computer security, and therefore difficult to generalize. Additionally, the January 2015 Update dutifully catalogued even more cases involving invalid claims, emphasizing the increasingly gloomy prospect for this area of patent law.

In sum, the central theme of the 2014 Interim Guidance (including the January 2015 Update) was the courts’ severe and as-yet-unbounded elevation of the “utility” requirement of 35 USC 101, casting a pall over the validity of a wide range of pending and issued patent claims.


2. The Ambitious Substance of the July 2015 Update to the Interim Guidance

Late in July 2015, the USPTO released a new update to the Interim Guidance. Most of this material is comparatively straightforward: updating the compendium of significant cases about subject matter eligibility; correlating selected comments in court opinions with principles such as “markedly different characteristics” and the examiner’s prima facie case requirements; meta-level responses to requests for clarification.

However, one part of the July update stands out: Appendix A of the July update presents several new examples of patent-eligible claims. These examples are not redundant with known examples, but involve subject matter in areas that the courts have not addressed yet – and present strong arguments for their eligibility under 101 that are generalizable to large classes of technology.

The notable examples in Appendix A include:

  • Example 21: Transmission of Stock Quote Data

    This hypothetical presents an example of a patent-eligible business method. First, the exercise presents a claim modeled after U.S. Patent No. 7,035,914 (at issue in the pre-Alice case of Google v. SimpleAir), and characterizes it as patent-ineligible because the transmission of stock quote data is an abstract concept with no connection to technology. In contrast, a hypothetical claim is presented with additional elements pertaining to the presentation of this data on a device: the idea that time-sensitive stock quote alerts can be missed if the device is powered off, where a viewer application on the device turns the device on in order to present the alert. 3 The hypothetical characterizes this claim as patent-eligible because it provides “significantly more” than an abstract idea. In this example, the USPTO ventures a strong opinion in quite uncharted technical waters: indicating that a claim may be patent-eligible because of the manner in which information is presented on a display – that is, the behavior of the device. To date, no court opinion has found any such claim to be patent-eligible. Of course, the closest case is DDR Holdings – but the subject matter there is different: the content of the information, and the manner of generating it for transmission to a device, which presents it in the conventional manner (presumably, in a web browser).

    This hypothetical reinforces my earlier comments about post-Alice patent-eligible business methods: in the context of a business method, a specific technical problem can arise, and can be solved by a specific device behavior. This exercise is also evocative of Diamond v. Diehr: the presence of an “abstract idea” (such as the Arrhenius equation), while ineligible in isolation, can be a key part of a practical application that garners patent eligibility. The “something more” must be more than a mere field of use (e.g., “presenting stock quotes on a mobile device”) – rather, the abstract idea must be used to cause the device to exhibit a “technical effect.”

  • Examples 22-23: Dueling Graphical User Interfaces

    These hypotheticals present contrasting examples of graphical user interface claims. Following the pattern above, Example 22 recites a claim found patent-ineligible in Dietgoal Innovations v. Bravo Media, which purports to present a user interface with a description of content. The example explains that technology is tied neither the device (beyond wholly conventional components: “a User interface,” and “a Database of food object”) nor the content (a user’s diet choices).

    Contrasting Example 23 begins with an explanation of a common problem within graphical user interfaces – the avoidance of overlap conditions among windows – and techniques for automated detection and rearrangement of windows to alleviate this condition by adjusting the interior margins of the window. The example then presents two patent-ineligible claims that recite this idea in inadequate detail (those that end with the determination of a “scaling factor,” but that fail to apply it to anything), and two patent-eligible claims of different styles. 4

    This example is notable for two reasons. First, the subject matter of these claims is traditional computer science, of the “improve the functioning of the device” type – a prospect that, surprisingly, some post-Alice cases have called into question. Second, this hypothetical validates two different claim styles for computer-implemented inventions: a functional approach, describing the low-level functional steps of the method; and an algorithmic approach, emphasizing the types of calculations that form the mechanics of the technique. Both examples stand in stark contrast with the dismissive approach that several courts have exhibited, where the opinion outright disregards significant detail and lengthy blocks of claim language as immaterial to the question of patent eligibility.

  • Example 26: Internal Combustion Engine

    Following a review of examples reiterating Parker v. Flook and Diamond v. Diehr, this example presents a patent-eligible claim for an engine and a control system. 5 While this claim closely resembles Diehr, the manner in which the claim elements are recited solely with functional language is interesting. Both the structural components (“a combustion chamber”; “a throttle position sensor”; and “an exhaust gas recirculation valve”) and the “control system” (a clear nonce term!) are described strictly according to their functions and functional interaction with other components. Looking past the names of components, the entire description is a functional block diagram. Moreover, the functionality is not even recited at a particularly low level: the valve simply “regulates the flow of exhaust gas from the exhaust manifold to the air intake manifold.”

    The patent-eligible characterization of this example speaks strongly to the anti-functional-language movement. Some of the more extreme punditry since Alice has denigrated functional language to the level of “patent profanity,” and advocated structural – preferably physical – claim language as the sole province of 35 USC 101 – and even some examiners attempt to deny functional language any due weight. This example provides a clear rebuttal to these arguments.

  • Example 27: BIOS

    This example provides a patent-eligible claim involving booting a computer from BIOS stored on a network – i.e., the foundations of PXE. 6 This hypothetical is presented as an example of a device configuration that is so inherently rooted in technology that it not only satisfies 35 USC 101 – it does not even require a full Alice analysis, but only a verification of a valid statutory class and a cursory statement that an abstract idea is not involved.

    Most interesting in this claim is that it is not even limited to a method performed by a device: a human could perform each step of the boot process. It is not clear whether the USPTO believes that the performance of the method by a human is included, or whether the claim implicitly requires its application by the host computer – but both conclusions are interesting, in the relaxed requirements of explicit “cause the machine to…” language for methods that centrally involve the performance of the computer as a machine.

In each of these hypotheticals, the USPTO has hazarded opinions in areas where the courts have not clearly spoken – and have provided more generalized and positive guideposts to patent-eligibility than the entire court system has, in the entire year since Alice. Such assertiveness is out of character for the USPTO, and contrasts markedly with the earlier versions of the Interim Guidance.

We cannot know the motivations of the USPTO in risking such bold statements, but we can speculate: While 101 rejections within the USPTO rapidly spiked after Alice, many such rejections were intended to tread water, until the courts could provide guidance to sort them out. After waiting over a year for reliable descriptions from the courts as to which claims it should allow, the USPTO’s patience has been rewarded with little more than vague rhetoric that such claims might exist in some other universe. Further delay risks further overburdening the PTAB with appeals and exacerbating the “churn” and backlog that has been the USPTO’s bane for over a decade. As an operational matter, the USPTO can no longer levitate on this issue – it must give its examiners some guidance on these topics. The courts cannot fairly admonish the USPTO for providing answers to critical questions on which the courts have failed to speak.


3. The Practical Impact of the July Update to the Interim Guidance

The boldness of the principles expressed in the July update prompts some evaluation of its reliability: How strongly should applicants and patentees rely upon these hypotheticals for decisions of filing, specification and claim drafting, prosecution, and litigation? How likely are examiners and judges to find arguments based on these hypotheticals to be well-founded and persuasive?

Several ideas affect the impact of this update:

  • Political Disadvantage: In general, the Interim Guidance does not have the same force of law as court opinions – not even as much as PTAB opinions. Judges who disagree with the principles of these hypotheticals will experience no friction, not even a speed bump, in crushing them with superseding legal precedent.

  • Political Advantage: The July update to the Interim Guidance is not particularly inconsistent with existing court decisions. Rather, it fills in gaps in the case law, perhaps reciting principles that the courts might have liked to support, but for lack of opportunity among the cases at bar. Conversely, court reversal of the USPTO’s opinions, lonesome as they are on this side of the discussion, would not only demonstrate a serious policy conflict, but would tip the courts’ hand as unabashedly anti-patent – in a way that might prompt unwanted attention and criticism from Congress.

  • Technical Advantage: Each hypothetical includes a thorough technical analysis of the claimed subject matter, including an explanation of the “technical effect” of each patent-eligible claim. The depth of this analysis is more persuasive than courts’ superficial dismissal of reviewed cases, based on an overgeneralized, and distinctly non-technical, opinion. Additionally, the subject matter of the hypotheticals has been carefully crafted: courts will encounter difficulty in formulating a similarly detailed technical analysis that identifies technical flaws in the USPTO’s arguments.

  • Procedural Advantage: Even though the Interim Guidance has little legal substance in courts, it has more power on Dulany Street: it is the primary authority and most direct instruction to examiners for making allowance and rejection decisions. It is therefore the single best source of authority for working with examiners to secure patents. And as a practical matter, possession is nine-tenths of the law – an issued patent is valid until invalidated at court, which requires extensive (and expensive!) effort. We can therefore expect the Interim Guidance to promote the issuance of a significant number of patents that will not be challenged in court, and remain at least presumptively valid.

  • Procedural Disadvantage: The Interim Guidance does not address the single greatest problem with 35 USC 101. There is no cure for the sprawling, insubstantial, opinion-based chaos that Alice has created, which, even at this early stage, exhibits the seeds of brand-new circuit splits. There is no cure for the fact that even the Court’s cornerstone example of patent eligibility, Diamond v. Diehr, could be easily invalidated under Alice. Accordingly, examiners continue to enjoy complete discretion in patent eligibility determinations: the conflicting body of authority provides ample support for either allowing or rejecting / invalidating virtually any case, to reach the reviewer’s desired outcome based on personal philosophy or predilection.

    This feature – the complete discretion afforded by the Court’s subjective, “smell-test” principles – continues to corrupt the core of U.S. patent law, transmogrifying it from a reliable, consistent, evidence- and statute-driven process into a capricious, Star-Chamber-like apparatus. The gravity of this defect cannot be overstated – and yet, this danger remains unrecognized, let alone mitigated. It is our duty to continue pointing out this alarming defect until those with power understand and address it.

Despite these considerations – in general, given the enormous body of patent-invalidating case law, any positive source of authority about patent-eligible claims is welcome at this point. For this, the USPTO’s uncharacteristic courage in providing substance to fill the vacuum should be duly recognized and appreciated.


Notes:

  1. The legitimacy of this claim is called into question by the Supreme Court’s unprecedented activism over 35 USC 101 – despite the fact that”the statute has not changed a syllable” since its passage in 1952.
  2. To be fair to the courts, judges can only rule on the claims under appeal – and since Alice more particularly targeted some areas of patenting such as business methods, it’s unsurprising that more of those cases were rapidly appealed to the courts than cases with strongly patent-eligible claims, thus skewing the score card of decisions.

    On the other hand, the rhetoric of the courts has been overwhelmingly negative, providing heaps of rationale for invalidating claims. The courts could easily have chosen to balance their invalidation not with vague commentary that some claims might be patent-eligible, but with specific comments about how the claims at bar could have been drafted differently to satisfy 101. The courts could have also sought to identify some dependent claims or even specification material that does satisfy 101, as dicta that did not affect the outcome of the case in controversy. The rarity of these instances in the courts’ post-Alice decisions speaks volumes about the lack of balance in their priorities.

  3. Example 21 patent-eligible claim:
    2. A method of distributing stock quotes over a network to a remote subscriber computer, the method comprising:

    providing a stock viewer application to a subscriber for installation on the remote subscriber computer;

    receiving stock quotes at a transmission server sent from a data source over the Internet, the transmission server comprising a microprocessor and a memory that stores the remote subscriber’s preferences for information format, destination address, specified stock price values, and transmission schedule, wherein the microprocessor filters the received stock quotes by comparing the received stock quotes to the specified stock price values;

    generates a stock quote alert from the filtered stock quotes that contains a stock name, stock price and a universal resource locator (URL), which specifies the location of the data source;

    formats the stock quote alert into data blocks according to said information format; and

    transmits the formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber based upon the destination address and transmission schedule,

    wherein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.

  4. Example 23 patent-eligible claims:

    1. A computer‐implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface, the method comprising:

    displaying a first window containing textual information in a first format within a graphical user interface on a computer screen;

    displaying a second window within the graphical user interface;

    constantly monitoring the boundaries of the first window and the second window to detect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;

    automatically relocating the textual information, by a processor, to an unobscured portion of the first window in a second format during an overlap condition so that the textual information is viewable on the computer screen by the user; and

    automatically returning the relocated textual information, by the processor, to the first format within the first window when the overlap condition no longer exists.

    4. A computer‐implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface, the method comprising:

    displaying a first window containing textual information in a first format within a graphical user interface on a computer screen;

    displaying a second window within the graphical user interface;

    constantly monitoring the boundaries of the first window and the second window to detect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;

    determining the textual information would not be completely viewable if relocated to an unobstructed portion of the first window;

    calculating a first measure of the area of the first window and a second measure of the area of the unobstructed portion of the first window;

    calculating a scaling factor which is proportional to the difference between the first measure and the second measure;

    scaling the textual information based upon the scaling factor;

    automatically relocating the scaled textual information, by a processor, to the unobscured portion of the first window in a second format during an overlap condition so that the entire scaled textual information is viewable on the computer screen by the user; and

    automatically returning the relocated scaled textual information, by the processor, to the first format within the first window when the overlap condition no longer exists.

  5. Example 26 patent-eligible claim:
    1. An internal combustion engine providing exhaust gas recirculation comprising:

    an air intake manifold;

    an exhaust manifold;

    a combustion chamber to receive air from the air intake manifold, combust a combination of the received air and fuel to turn a drive shaft, and output resulting exhaust gas to the exhaust manifold;

    a throttle position sensor to detect the position of an engine throttle;

    an exhaust gas recirculation valve to regulate the flow of exhaust gas from the exhaust manifold to the air intake manifold; and

    a control system, comprising a processor and memory, to receive the engine throttle position from the throttle position sensor, calculate a position of the exhaust gas recirculation valve based upon the rate of change of the engine throttle position and change the position of the exhaust gas recirculation valve to the calculated position.

  6. Example 27 patent-eligible claim:
    15. A method for loading BIOS into a local computer system which has a system processor and volatile memory and non‐volatile memory, the method comprising the steps of:

    (a) responding to powering up of the local computer system by requesting from a memory location remote from the local computer system the transfer to and storage in the volatile memory of the local computer system of BIOS configured for effective use of the local computer system,

    (b) transferring and storing such BIOS, and

    (c) transferring control of the local computer system to such BIOS.

21 Comments

“I find it much more off-putting when drafters unnecessarily make up technical words, in an effort to “dress up” the subject matter. I ran across this example centered on the notion of “informons,” which apparently means: a piece of information. I mentally classify these disclosures as veering into the realm of pseudoscience – same as “miasms” in homeopathy and “thetans” in scientology.”

David, I really enjoy your articles and I’m sorry for not finding your web-site sooner, however there are several valid reasons for a good patent drafter to make up technical terms such as the ones you side.

For example, making up technical words makes it harder for an Examiner to make a 35 USC 103 rejection based on a word search of unrelated technologies. Thanks to KSR eliminating the TSR objective test, there is no longer much of a need for an Examiner to provide any evidence as to why two references would have been combined prior to a POSA reading the applicant’s application. Therefore, since the KSR decision, I have seen a noticeable increase in 35 USC 103 combination rejections where it is quite clear that one or more references in the combination were found and applied solely because they were found by the Examiner using a word search of terms in the claims rather than based on the technology of the references actually relating to each other and relating to the technology of the claims.

For example, imagine you have a claim that includes a “FAT” as one of the claimed features, which in the context of invention refers to a file allocation table and the Examiner cites a reference relating to meat process that includes the term “fat”. I’ve seen rejections almost as bad as this.

Another reason to make up technical terms is to make your claims look more patent eligible under 35 USC 101. Instead of using terms that make it look like you are claiming a generic computer running software, you instead make up technical terms that make your claimed invention look more like a mechanical invention. To ensure claim scope, you make sure to define the made up technical terms within the specification so that a generic computer running software would be covered by your claims.

So I would hesitate to criticize a patent applicant for making up technical terms without thinking about why the patent applicant might be making up technical terms.

For example, making up technical words makes it harder for an Examiner to make a 35 USC 103 rejection based on a word search of unrelated technologies.

Ah – see, I’ve encountered many examiners who respond to “made-up words” by doing exactly that. I had the following conversation with many examiners around 2009:

Me: You rejected this claim term (X) based on a reference that has nothing to do with this application.

Examiner: I’m citing it because (X) includes this concept (Y) from the reference.

Me: No, (X) and (Y) are completely unrelated. You are required to interpret (X) as I’ve used it in my specification.

Examiner: On the contrary, I’m entitled to the broadest reasonable interpretation of (X), because your claims don’t provide any definition. And in my view, the broadest reasonable interpretation of (X) includes (Y). The specification definition doesn’t matter, because it’s not in the claim – and the claims are not limited by the specification (see In re Van Geuns).

And… that’s where the conversation ended. Eventually, I tired of having this argument that (X) does not mean (Y) because of a plain-language definition of (X) in the specification – and chose instead to just put that same definition into the claims. And if I’m doing that, I may as well only use that plain-language definition. and take out the made-up terms.

Ideally you would make up a word that cannot be found anywhere by word search or would be found in a technology so unrelated to the technology of your invention that the Examiner would look silly before an SPE or the Board for citing the unrelated reference.

Also, the Examiner in your example is misapplying In re Van Geuns. In re Van Geuns holds the that limitations from the specification are not read into the claims. However, if you define a term in the specification and use the term in a claim, In re Van Geuns does not apply.

Also, an Applicant is entitled to be his/her own lexicographer, which also should defeat the Examiner’s argument if you have provided a definition of the term in the specification.

Rational, I entirely agree with you – but by and large, the USPTO doesn’t. Like Alice (“it’s abstract because we say it’s abstract”) and KSR (“these references can be combined because we say they can be combined”), In re Van Geuns is interpreted by the examining corps as: “we don’t have to look at the specification if we don’t want to.” Full stop.

When we encounter these examiners, and their supervisors aren’t any help… what are we to do? We can either appeal, or amend. This is just not the type of issue that I think deserves the costs of an appeal and a four-year wait – when the alternative is: just put the definition in the claim. It’s ugly, but it is our reality.

David, strategically, I would suggest that in many cases this may be exactly the kind of issue that you want to appeal, because you may have a decent chance of winning your appeal. Examining a claim while ignoring the Applicant’s specific definition of a term is clear error and you have support for this position in the MPEP, not just the case law:

MPEP § 2111.02(IV), “An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).

MPEP § 21173.05(a), “When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).”

If the Examiner has stated he/she will allow the case if you add the language from your definition to the claim, then, sure, it is probably a good idea to add the language from the definition.

But, if the Examiner is being stubborn, why not go up on appeal on a claim that you can show from the Examiner’s own words has not be examined in accordance with the requirements of the MPEP? Nothing is guaranteed, particularly these days where the PTAB is regularly acting without regard to the facts or the law, but that’s about as strong a position as you can have on appeal.

Plus, if the case is pulled from appeal in the face of your Appeal Brief, possibly as a result of the pre-Appeal review conference, the Examiner has already received his/her two counts for a disposal, so any further prior art search will be gratis by the Examiner and, therefore, may not be done at all by the Examiner.

Occasionally, I encounter these scenarios where “the examiner is being stubborn” about a minor issue, and I have to make a difficult choice between just complying with an amendment or invoking the appeal process.

(In some cases, we can just hold our position while continuing to work through the more substantive issues – such as objections to the title. Many of these trivialities boil down to the examiner’s stylistic preferences, and often vanish once the case is otherwise allowable. But sometimes, a trivial issue like this is actually obstructing examination progress, and we need to deal with it.)

And in these scenarios, I typically encounter one factor that pushes me toward amending: the sheer painfulness of the appeal process.

It’s disappointing that many SPEs will double down on an examiner’s position that is completely vacuous – disregarding claim elements, bizarrely misinterpreting our technology (“are we both looking at the same application?!”), or interpreting references exactly opposite of their clear technical meaning – so I don’t ever expect to win at the pre-appeal stage, even in the strongest cases. And the full appeal process is so painfully long and costly – protracted, costly, and time-consuming (I tend to obsess over briefs), not to mention creating lots of prosecution history estoppel – that it’s tough to justify all of that just because the examiner is being stubborn.

I am certain that examiners are not only aware of tradeoff, but that they bank on it (“I can dig in my heels until the board tells me otherwise.”) So they’re willing to call our bluff – because the costs to the examiner, even after losing the appeal, are much lower than for the applicant.

So in this circumstance, I find myself asking: What is the best use of my client’s resources? Where the issue isn’t really substantive but represents an obstacle to examination, I find myself making the same choice.

It is really disappointing that PTO management either does not understand these dynamics – or that they do understand it, and are just OK with examiners pressuring applicants into complying with their preferences or personal flavor of patent law. But that is our reality, as I understand it.

Rational, how do you assess this tradeoff? (That’s not a rhetorical question; I find these conversations to be quite valuable, and I’m interested in your answer.)

Am I the only one who’s bothered by the fact that the Example 21 claims include the term “universal resource locator,” which is abbreviated URL? The term of art URL refers to _uniform_ resource locator, not universal resource locator. Patent No. 7,035,914 specification of the mentions “universal resource locator (URL)” in the specification, but not in the claims, so it’s not all that surprising that the error was not corrected.

I hate to be such a pedant, but as I say, URL is a (freaking) term of art. Universal resource locator is not the correct term. It’s just plain wrong. Did none of the Examiners and other Patent Office personnel who drafted and edited this guidance even notice? How can I get such oblivious Examiners to examine my applications? Sheesh.

I agree with Easwaran that your post is optimistic David, and I consider myself to be an eternal optimist as well, but over the past several years, your conclusion that US “Patent law is in a deplorable state” overwhelms all other interpretations. The current state of Patent law angers me, and I don’t see any reasonable hope for clarification for several years at minimum.

I think that we should have some tolerance for small errors such as this. Even though I’m fully aware that GPS stands for “global positioning system,” I sometimes incorrectly expand it as “global positioning service.” Semantically identical, but still incorrect.

I find it much more off-putting when drafters unnecessarily make up technical words, in an effort to “dress up” the subject matter. I ran across this example centered on the notion of “informons,” which apparently means: a piece of information. I mentally classify these disclosures as veering into the realm of pseudoscience – same as “miasms” in homeopathy and “thetans” in scientology.
[blockquote]Over the past several years, your conclusion that US “Patent law is in a deplorable state” overwhelms all other interpretations. The current state of Patent law angers me, and I don’t see any reasonable hope for clarification for several years at minimum.[/blockquote]
I agree! I am also angry that patent law has been so severely distorted into a massively inefficient, capricious process, in furtherance of business agendas passed off as “improving patent quality.”

I agree that repairing the damage will take years at minimum. Going forward, I’d like to be part of that solution – and the observations I’ve tried to express in this blog are only one step in this process.

On the one hand, the USPTO’s efforts in the Interim Guidance exacerbate this problem. But I view this as a majorly positive step: the Interim Guidance does not create ambiguity, but reveals the ambiguity created by decisions such as Alice. Any steps that shed more light on just how bad the situation is now, will ultimately foster our repair efforts.

“I think that we should have some tolerance for small errors such as this.”

I’m not sure what you regard as “small errors such as this,” but the USPTO published this guidance and announced it in the Federal Register. The example claims that included the incorrect term “universal resource locator” were drafted by the USPTO, not by the inventor or practitioner of the patent (although the incorrect term appears once in the specification of the patent). This error – which ought to have been spotted by anyone with mere passing familiarity with html – originated with the USPTO, to whom we look for guidance.

How many layers of approval did the updated guidance need to go through in order to be published with that error? It’s entirely possible that the Commissioner read those claims – that were drafted by the USPTO. How big was the committee that reviewed the guidance? I think you dramatically understate the extent of the inattention at the USPTO, to whom we are supposed to look for guidance.

I don’t understand how Alice analysis could invalidate Diehr’s patent.

While a small isolated portion of the Diehr software was performing an operation (calculating values according to the Arrhenius equation) computable by a human being using a pencil-and-paper method, the totality of the software associated with the Diehr ‘142 claims was obviously not equivalent to a Turing machine because it was controlling devices that took heat measurements and because it controlled devices that opened molds at optimal moments in the rubber curing process.

Already back in the 1930s before there were electronic computers, mathematical logicians like Church and Turing developed a framework (e.g., Church Turing thesis) useful for addressing issues of patent-eligibility of claims involving a software component.

At the time of Diehr’s invention, I could have designed a rubber curing device that did exactly what Diehr’s system did without a single digital component. It would obviously have been an improvement on a statutory device, and I could certainly at the time have written patent-eligible allowable claims for my non-digital device.

Perhaps the patent prosecutors did not make that point clear to the primary examiner, but I can’t see why the examiner would have rejected claims involving digital components under § 101 while comparable claims for a more traditional purely analog mechanical system would obviously have passed muster under § 101 and almost certainly have been allowable.

Joachim, my point is that if you look at the specific arguments that courts have raised in finding many claims invalid under Alice, every single one of those arguments equally describes the claims in Diehr.

As for this:

…the totality of the software associated with the Diehr ‘142 claims was controlling devices that took heat measurements and because it controlled devices that opened molds at optimal moments in the rubber curing process.

First: The preamble discusses a “rubber-molding press,” but courts routinely ignore preambles as non-limiting. The body only refers to a “press” and a “composition” and “curing,” so courts would apply it broadly (ie: overbreadth) to any molding process.

Second: Lots of patents have been rejected recently that provide software that involves specific machinery. Thales Visionix involved cockpit helmet-tracking and inertial sensors. Ex parte Cote involved a control system for optimizing the timing of cluster and bin processing in an lithographic manufacturing system. Now, the claims at issue in both cases are not very good – but my point is that neither one was saved under 101 by the fact that the processes involve “particular” machinery. Diehr’s claims would not fare any better.

Perhaps the patent prosecutors did not make that point clear to the primary examiner, but I can’t see why the examiner would have rejected claims involving digital components under § 101 while comparable claims for a more traditional purely analog mechanical system would obviously have passed muster under § 101 and almost certainly have been allowable.

But by the same token – most of the claims that have been invalidated under Alice could similarly be implemented as analog machinery. It might be less efficient to do so, but it’s certainly possible. That fungibility is a fundamental principle of computer science – yet, the courts appear to be hung up on this perceived distinction between “digital” vs. purely physical machinery. It has no valid basis in technology, and it’s extremely problematic.

You know what is weird about this is how much time examiners are having to spend doing this.

Night, I completely agree.

And guess who agrees with us? Examiners. Several of them have expressed to me that they really loathe wasting time on this 101 nonsense – repeated training, shifting policy, etc. – because it is a major distraction from their technical analysis under 102/103. And it’s just as difficult to make any statement that the claims are valid under 101, as to issue a 101 rejection.

Honestly, I think that this was part of the USPTO’s objective with these materials: it is trying to give examiners more material to draw from, so that they can reference the Interim Guidance in their 101 rejections and move on, rather than having to reinvent the wheel for every 101 rejection.

David, yours is a surprisingly cheery outlook. Unfortunately, I think it’s wrong, and in practice, we’ll see worse rejections and more intransigence from examiners after the July Update. Here are three reasons why.

First, the examples suggest that the only thing necessary to establish abstractness is a conclusory statement that “this claim is similar to other concepts that have been identified as abstract, like [out of context gist] in [case 1].” The result will be a significantly reduced amount of analysis in the step 2A portion of rejections.

Second, the bold statements alleging that examiners do not need to present evidence for their factual findings makes this update worse than nothing in many cases. Expect a lot of step 2B arguments that state “the additional elements are not ‘significantly more’ because they are well-understood, routine and conventional activities and the July Update says I don’t need to tell you why.” In fact, expect this rejection even when there is no corresponding prior art rejection, because “the July Update confirms that I don’t need to have evidence.”

Third, rather than engaging with the Supreme Court’s repeated stance that preemption of a judicial exception is the only basis for ineligibility of a claim that falls within a statutory category, the July Update has made clear that the USPTO thinks preemption is irrelevant. For instance, the July Update goes so far as to say that, “[t]he use of ‘tie up’…is not meant to imply that the streamlined analysis is…a preemption test.” I mean…this is nonsense; what else could a test designed to ensure that claims “clearly do not seek to tie up any judicial exception such that others cannot practice it” possibly be but a preemption test? Forget your preemption arguments.

First, the examples suggest that the only thing necessary to establish abstractness is a conclusory statement that “this claim is similar to other concepts that have been identified as abstract, like [out of context gist] in [case 1].” The result will be a significantly reduced amount of analysis in the step 2A portion of rejections.

Hmm. I agree that the “gist”-style explanations presented in the Interim Guidance are quite brief – but I don’t think that they are presented as examples of the full analysis that examiners are required to provide under 101.

Indeed, one of the strongest themes of the USPTO’s handling of 101 this year – apparent in both the January public roundtable, and this update to the Interim Guidance – was that examiners must be more forthcoming and detailed with their 101 analyses. The main document of the July update (the one called “July 2015 Update: Subject Matter Eligibility (July 30, 2015)”) establishes this point, loud and strong – note this part:

IV. Requirements of a Prima Facie Case

Concern was expressed about examiners satisfying the proper burden for a prima facie case when making an eligibility rejection. Accordingly, the following discussion clarifies the requirements of a prima facie case, in order to guide examiners in satisfying their burden and ensuring that they reject on eligibility grounds only where appropriate. Examiner training (see Section V below) also emphasized that performing a thorough analysis and writing a clear rejection is a critical part of satisfying the examiner’s burden. This discussion is meant to help examiners and applicants understand when a proper prima facie case has been made, so there is no doubt as to whether examiners have met their burden.

In view of these sections, I believe that when examiners keep doing the “this claim is abstract, end of story” thing in their office actions, we can point to this section – and call up their SPE – to demand a reissuance of the office action.

But I agree with you, entirely, that “preemption” is extremely poorly defined. So is “nonce word,” and “fundamental business practice,” and “organizing human activity,” and “technical effect,” and… pretty much every other term in this debate! The entire court system is really just winging it when it comes to developing these concepts – and has been for, what, 45 years and counting?

Patent law is in a deplorable state, as I noted in my article from yesterday about the critical damage wrought to this entire system by the courts’ chaotic thrashing. And it’s not even just 101 – it’s also 112, 103, etc.

Sorry I missed your reply until just now. A few follow-up points.

[quote]I agree that the “gist”-style explanations presented in the Interim Guidance are quite brief – but I don’t think that they are presented as examples of the full analysis that examiners are required to provide under 101.[/quote]

Brevity isn’t my core concern, although it’s typically a sign of the failure to provide a reasoned analysis. Rather, what concerns me is the failure to actually provide the analysis at all. The “explanations” presented in these new examples are simply conclusory statements. Notably, this is not the case in the examples suggesting that the claims satisfy Step 2A (e.g., Example 23, claim 1). Apparently, you need a detailed analysis to say something is not directed to an abstract idea, but a conclusory statement is fine to say that it is (e.g., Example 23, claims 2-4). Moreover, these examples are contemplated as the full analysis that examiners are supposed to provide: what else could be meant by the statement in the introductory paragraph of Appendix 1 of the July Update that “each of the examples shows how claims should be analyzed under the 2014 IEG.”

[quote]Indeed, one of the strongest themes of the USPTO’s handling of 101 this year – apparent in both the January public roundtable, and this update to the Interim Guidance – was that examiners must be more forthcoming and detailed with their 101 analyses. The main document of the July update (the one called “July 2015 Update: Subject Matter Eligibility (July 30, 2015)”) establishes this point, loud and strong[/quote]

I read this exactly the opposite way. The July Update ostensibly addresses the [i]prima facie[/i] case requirement but [u]still[/u] provides these examples that do not articulate reasons or facts demonstrating why there is allegedly an analogy between the precedent and the rejected claim. This is one reason why I think the July Update is worse than nothing; the USPTO is dissembling. Rather than confront the true APA issues with their extant policy, they are trying to conjure new reasons to support the old conclusion.

In this regard, I’m surprised you haven’t addressed what I believe is the most important defect of the July Update, which is the decision not to require evidence for factual findings. As you surely know, this decision is simply inexplicable in view of the APA, which binds the USPTO in accordance with [i]Dickinson v. Zurko[/i], [i]In re Gartside[/i], and the subsequent [i]In re Zurko[/i] (the last of which expressly requires “some concrete evidence” for all USPTO factual findings). The ostensible basis? That the Supreme Court – which is not subject to the APA – relied on documentary evidence, but because reliance on new documentary evidence not presented before a lower tribunal is a technical violation of Supreme Court procedure, “[t]hese documents cannot be evidence” (yes, that’s a direct quote from the July Update). So in sum, what’s the USPTO conclusion? Even though the Supreme Court in Bilski relied on documents to prove the truth of the matter asserted (that hedging is a “fundamental economic practice”), the USPTO has unilaterally decided that documents (whether they are considered “evidence” as a court would use that term or not) are not necessary at all! See this tortured logic yourself on page 6 of the July Update.

[quote]But I agree with you, entirely, that “preemption” is extremely poorly defined.[/quote]

I actually disagree with this statement. While there may be some gray area surrounding what degree of preemption demonstrates ineligibility (what demonstrates preemption of all “substantial practical applications” of the idea?), the term “preemption” is actually very straightforward. So, I was not arguing that “preemption” is poorly defined. What I was arguing, though, is that the USPTO has decided that preemption is [u]irrelevant[/u]. This stance is clearly wrong. If the stance were based on the tortured discussion of preemption in [i]Sequenom[/i], I could at least understand the position (despite it still being contrary to controlling Supreme Court precedent), but the reasoning isn’t based on [i]Sequenom[/i]. It’s just a bold policy stance.

Great work. I’ve been working on incorporating the new interim guidance into my responses and appeals. And I wanted to point out an inconsistency I noticed while evaluating example 23. For Claim 1 they state, “the claimed method is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces. Additionally, the claim does not recite any other judicial exception. Therefore, the claim is not directed to a judicial exception (Step 2A: NO). The claim is patent eligible.” Yet, for Claim 4, which includes all the same limitations as Claim 1, the PTO completely ignores this line of reasoning and instead states Claim 4 is similar to Claim 2 and is therefore “directed to an abstract idea”. This is illogical because Claim 4 is still necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces. The PTO is not actually evaluating what the claim “is directed to”? Instead, they are merely looking for any wording in a claim that might be cornered into one of the judicial exceptions, while ignoring what the claim is actually “directed to”. Further, Claim 4 is actually quite a bit narrower than Claim 1, so what would the PTO say if the narrower elements of Claim 4 were actually presented as a dependent claim to Claim 1? Would the independent claim not be directed to an abstract idea where the dependent claim is? At least there is clear guidance to draft claims broader to leave out how something is actually calculated. Lucky us.

John: Excellent observation!

On the one hand, it’s clear that the USPTO reached the “YES” decision for claim 4 (as opposed to claim 1) because claim 4 includes some “calculating” steps. It seems pretty consistent that if your claim positively recites steps involving a computer performing calculations, the odds of having those elements found “abstract” are quite strong.

But this example is the inverse principle as Diehr, right? Diehr stood for the prospect that when part of the claim involves calculation, the claim is not “abstract” if the rest of it involves a particular solution to a particular problem. But the contrast of these examples suggests the opposite: even if most of the claim is directed to a particular problem/solution, the inclusion of some “calculating steps,” as additional detail, might risk dragging the claim into “abstract” territory.

Very troubling, indeed. I don’t believe that this was the USPTO’s intent with these examples – but that is a legitimate interpretation, nonetheless.

David, excellent work, as usual. It distills a difficult topic well. Would you be able to send me a PDF version – I would like to cover this with my IP group here at Brouse.

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