overcoming 101 rejections for computer and electronics related...

Overcoming 101 Rejections for Computer

and Electronics Related Patents Leveraging USPTO Guidance and Recent Decisions to Meet 101 Patent Eligibility Requirements

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Charles Bieneman, Member, Bejin Bieneman, Detroit

Isaac T. Slutsky, Shareholder, Brooks Kushman, Southfield, Mich.

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Update on Patent-Eligibility and Patent Prosecution

Charles Bieneman BEJIN BIENEMAN PLC

Isaac Slutsky BROOKS KUSHMAN P.C.

© BEJIN BIENEMAN PLC – All rights reserved.

5

• Overview of Section 101 Law

• USPTO’s Approach

• Federal Circuit review

• PTAB treatment of patent-eligibility in appeals in ex parte prosecution

• A detour into 35 U.S.C. § 112(f)

• Practice Tips

AGENDA

5


6

• Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title, so long as the claimed invention (1) is not an abstract idea or law nature without (2) significantly more.

35 U.S.C. § 101 (as modified by the courts).

PATENT LAW 101 (AS JUDICIALLY MODIFIED)

6


7

• S. Ct. June 2014: claims of 4 patents directed to “financial matters and risk management,” i.e., reducing “counterparty” or “settlement” risk following a trade in a trading system, unanimously held patent-ineligible.

• Included system, computer, and method claims (unlike Bilski).

• “We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

• Letting patentability hinge on recitation of a computer “would make the determination of patent eligibility ‘depend simply on the draftsman’s art.’”

THE “ABSTRACT IDEA” TEST: ALICE

7


8

• USPTO has posted a lot of guidance, summaries of the cases, and training materials.

• https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility

• Guidance tends to be very fact-specific, i.e., based on fact patterns of the various CAFC Section 101 cases.

• Mostly since, Alice, but also before.

• Next few slides have most recent material (April 2017).

USPTO GUIDANCE

8

https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility












9

USPTO GUIDANCE

9


10

USPTO GUIDANCE

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11

USPTO GUIDANCE

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12

USPTO GUIDANCE

12

Privileged and Confidential

Non-precedential Decisions

• “Non-precedential decisions: Finally, given the large and ever-increasing

number of precedential decisions, examiners should avoid relying upon or

citing non-precedential decisions (e.g., SmartGene, Cyberfone) unless the

facts of the application under examination uniquely match the facts at issue in

the non-precedential decision. The updated chart of court decisions available

on the US PTO' s SME Webpage indicates whether a decision is precedential

or nonprecedential.” • U.S. Patent and Trademark Office Memo November 2, 2016, emphasis added.

13

13


14

• Through March 31:

• 8 “eligible”

• 47 “ineligible” • See https://www.uspto.gov/sites/default/files/documents/ieg-mar-2017-sme_crt_dec.xlsx

• Accelerating pace:

• 2014 (6 months) – 7 cases

• 2015 – 9 cases

• 2016 – 26 cases

• 2017 (1st 3 months) – 12 cases

FEDERAL CIRCUIT TOTALS SINCE ALICE

14

https://www.uspto.gov/sites/default/files/documents/ieg-mar-2017-sme_crt_dec.xlsx








15

• Claims were directed to a “method for distribution of products over the Internet via a facilitator,” i.e., to monetize content.

• Went to S. Ct. twice; Fed. Cir. (Judges Lourie, Mayer, and O’Malley) invalidated on third go-round precedential.

• “The process [steps] of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.”

• “None of these eleven individual steps . . . transform the nature of the claim into patent-eligible subject matter.”

• This result surprised no one (and cert. denied July 2015).

ULTRAMERCIAL, INC. V. HULU, LLC (NOV. 14, 2014)

15


16

• “I agree that the claims . . . are ineligible for a patent, but write separately to emphasize three points.”

• First, whether claims meet the demands of 35 U.S.C. § 101 is a threshold question, one that most be addressed at the outset of litigation.

• Second, no presumption of eligibility attends the section 101 inquiry.

• Third, [Alice], for all intents and purposes, set[s] out a technological arts test for patent eligibility.

• “Because the purported inventive concept in Ultramercial’s asserted claims is an entrepreneurial rather than a technological one, they fall outside section 101.”

• Legally wrong but often practically correct?

ULTRAMERCIAL: JUDGE MAYER CONCURS

16


17

• Patent claims at issue were directed to managing the look and feel of e-commerce web pages to provide “store within a store” functionality to product pages.

• Majority (Judges Chen and Wallach) didn’t fully reach abstract idea question because the claims addressed the “problem of retaining website visitors,” which had no analog in the bricks-and-mortar world.

• Judge Mayer dissented: claimed abstract idea is “that an online merchant’s sales can be increased if two web pages have the same “look and feel”—and apply that concept using a generic computer.”

• Thus, majority stated that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”

• Problem was “the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.”

DDR HOLDINGS, LLC V. HOTELS.COM, L.P. (DEC. 5, 2014)

17


18

• Judge Chen: Ultramercial claims “broadly and generically claim ‘use of the Internet,’” whereas DDS Holdings claims “how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.”

• Judge Mayer did not bother to mention Ultramercial: the DDS patent claims simply took the old and well-known idea of having a “store within a store” and applied it to the Internet.

• Under Alice, the appropriate test is a “technological arts” test.

• Does it help to consider “boundary” cases?

• Internet Patents Corp., Enfish, TLI Communications, McRO?

CAN ULTRAMERCIAL AND DDR BE RECONCILED?

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19

• U.S. 7,707,505 is directed to “a method of providing an intelligent user interface to an online application.”

• Patent owner argued that maintaining state information as a user accessed “back” and “forward” buttons in a web browser was significantly more than an abstract idea.

• But patent did not describe how this was accomplished even though it was said to be the key innovation.

• “[T]he claim is directed to the idea itself—the abstract idea of avoiding loss of data.”

• Dependent claims simply recited generic data collection or limitation to a generic technical environment.

• Opinion by Judge Newman, joined by Judges Moore and Reyna.

INTERNET PATENTS CORP. V. ACTIVE NETWORK, INC. (FED. CIR. JUNE 23, 2015)

19

19


20

• “Patented logical model” of U.S. Patent Nos. 6,151,604 and 6,163,775 “include[d] all data entities in a single table, with column definitions provided by rows in that same table.”

• Rejected the idea “that claims directed to software, as opposed to hardware, are inherently abstract.”

• Claims here “are directed to a specific implementation of a solution to a problem in the software arts.

• The self-referential table achieved computing efficiencies.

• No abstract idea (2nd prong of Alice/Mayo test not reached).

• “Technical effect” test!

ENFISH, LLC V. MICROSOFT CORP. (FED. CIR. MAY 12, 2016)

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21

• Affirmed district court grant of motion to dismiss.

• Claims of U.S. Patent No. 6,038,295 are drawn to “recording and administering digital images” in a “telephone unit” that transmits them to a server, which in turn classifies the images.

• Abstract idea: “classifying and storing digital images in an organized manner.”

• Not saved by physical elements in the claims – claims merely recited a generic environment.

• No inventive concept: “the recited physical components behave exactly as expected according to their ordinary use.”

• No technical problem or solution (or “technical effect”)?

• Opinion by Judge Hughes (joined by Judges Dyk and Schall) the same week as Judge Hughes’ opinion in Enfish.

TLI COMMUNICATIONS LLC V. AV AUTOMOTIVE LLC (FED. CIR. MAY 17, 2016)

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22

• Affirmed invalidity of claims of U.S. Patent Nos. 7,233,843; 8,060,259; and 8,401,710, directed to “real-time performance monitoring of an electric power grid.”

• Representative claim, over a page long, recites “[a] method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid.”

• Abstract idea: “a process of gathering and analyzing information of a specified content, then displaying the results.”

• No significant additional innovation: claims were simply directed to analyzing data, and not (unlike claims in Enfish) to improving computing performance.

• Claims could prrempt other from solving the problem of “monitor[ing] and analyze[ing] data from multiple distinct parts of a power grid.”

• Technical environment not enough without technical solution.

• Opinion by Judge Taranto, joined by Judges Bryson and Stoll.

ELECTRIC POWER GROUP, LLC V. ALSTOM S.A. (FED. CIR. AUGUST 1, 2016)

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23

• Federal Circuit held that claims to “automatically animating lip synchronization and facial expression of animated characters” are patent-eligible.

• Parties tried to rely on 1980s U.S. S. Ct. cases: Diamond v. Diehr (patent owner) and Parker v. Flook (accused infringer).

• Fed. Cir. Applied Alice test: • By incorporating the specific features of the rules as claim limitations, claim 1 is

limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.

MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC. (FED. CIR. SEPT. 13, 2016)

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24

• Claims were directed to editing and managing XML documents.

• “Editing” claim allowed a user to modify a dynamic document generated by classifying data from an underlying XML document into different “record types.”

• These claims were “directed to the abstract idea of collecting, displaying, and manipulating data.”

• Limitations to XML data structures and documents were not narrower than the abstract idea but at most limited “the invention to a technological environment for which to apply the underlying abstract concept.”

• Not “significantly more”: claims recited at most “only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”

• “Managing” claims recited “creating a database and an index to search the database” for XML documents and, more generically, “storing and accessing user specific resources and information.”

• Abstract idea: “‘creating an index and using that index to search for and retrieve data.”

• The recited tags were simply used for organizational purposes just like books could be identified in a library by title, author, and subject.

• Enfish distinguished because claims here were not limited to a particular architecture (i.e., XML).

• Generic claims similarly failed as directed to the abstract idea of “remotely accessing user specific information” with at best a limitation to a generic technical environment.

INTELLECTUAL VENTURES I LLC V. CAPITAL ONE FINANCIAL CORP.

INTELLECTUAL VENTURES I LLC V. ERIE INDEMNITY CO. (MARCH 7, 2017)

24


What Happens on Appeal?

• Analysis of Ex Parte Appeals having 101 rejections

• Timeframe is decisions from 2016-Present

• 515 Total Decisions

25


101 Appeals by Tech Center

0

50

100

150

200

250

300

350

1600 1700 2100 2400 2600 2800 3600 3700 3900

26


101 Appeals in 3600

0

5

10

15

20

25

30

27


Outcomes Overall Examiner did not reject under 101

PTAB encouraged examiner to review under 101 88

Examiner did not reject under 101

PTAB introduced new rejection of all claims under 101 82


PTAB introduced new rejection of some claims under 101 3

Examiner rejected all claims under 101

PTAB affirmed 200

Examiner rejected all under 101,

PTAB Reversed 60


PTAB Reversed Some and Affirmed Some 4

Examiner rejected some claims under 101

PTAB affirmed rejection; introduced new 101 rejection of all other claims 20

Examiner rejected some claims under 101,

PTAB Affirmed 25

Examiner rejected some under 101,

PTAB Reversed 22


PTAB Reversed rejection and introduced new rejection on all claims 10

Examiner rejected under 101

PTAB did not reach a decision regarding 101 1

28


Outcomes in 3600 Examiner did not reject under 101







PTAB affirmed 200


PTAB Reversed 60






PTAB Affirmed 25


PTAB Reversed 22





22

63

3

122

37

1

13

12

9

4

All 3600

29


Outcomes in 2100 Examiner did not reject under 101







PTAB affirmed 200


PTAB Reversed 60






PTAB Affirmed 25


PTAB Reversed 22





22

63

3

122

37

1

13

12

9

4

All 3600

35

3

10

1

1

5

6

1

2100

30


3600 Reversals – What works?

• Run through of all reversed 101 rejections in 3600 decided in 2017

• 21 decisions put into categories

• Many of these cases had art rejections that the Appellant lost

31



• Examiner failed to address the claim language

32


Ex Parte Pavlou et al (2015-004033), decided 2/27/2017

• the Examiner summarily states that

• [t]he additional element(s) or combination of elements in the claim(s) other than the abstract

idea per se amount(s) to no more than mere instructions for implementing the abstract idea

on a generic computer. 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.

• We determine that this statement does not address sufficiently the actual

limitations of any claim.

33


Ex Parte MURTO et al (2015-001044), decided

2/22/2017 • Appellants persuasively argue that the Examiner has not sufficiently

demonstrated that the claims are directed to an abstract idea, under the first

step of the Alice analysis. As the Appellants point out, the Examiner’s

characterization of the claimed subject matter fails to encompass key

aspects of what is being claimed — especially the essential use of

“presence data.” See Reply Br. 9—10. In addition, the Examiner’s description

of the claimed subject matter as a “fundamental economic practice”

(Answer 7) conflicts with the recent coinage of several features involved

in the claims, such as delivering targeted advertising to a user’s “device”

based upon a “user profile” (see Reply Br. at 9).

34


Ex Parte Farnham et al (2015-001390), decided

1/30/2017 • In the instant appeal, the Examiner’s characterization of the claimed

subject matter as the purported abstract idea of “optimizing the

allocation of physically operating resources” (Answer 2) fails to account

for the particular details set forth in the claims, including claim 1 ’s

“matching each one of said resources with one of said task requests based on

a priority level assigned to each of said task requests” and the use of “an

arbitrage agent. . . identifying inefficient market transactions, breaking said

inefficient transactions and reallocating the buyer and seller agents into a

more efficient transaction.” Thus, the Examiner’s analysis does not sufficiently

establish that the claimed subject matter at issue is directed to an ineligible

abstract idea.

35


Ex Parte Hafner et al (2015-002200), decided 1/27/2017

• According to said memo, Examiners were to “[cjonsider the claim as a whole by considering all claim elements, both individually and in combination.” That was not done here. Claim 1, for example, is replete with limitations, none of which are specifically treated. The Examiner’s characterization of the claimed subject matter as “only manipulat[ing] abstract data elements” (Ans. 3) is not a fair reading of what is claimed.

• This limitation expressly requires the “starting, conducting, and ending charging of the electric vehicle charging transaction” and the generated energy transaction plan is the software which the processor in the computer executes in order “to control all aspects of the charging, discharging, and storing operations with the electric vehicle.” The characterization that the claim “only manipulates abstract data elements” (Ans. 3) fails to “[c]onsider the claim as a whole by considering all claim elements, both individually and in combination” as said then-existing guidance memo required Examiners to do.

36




• Examiner failed to address why the elements as a whole are not significantly

more

37


Ex Parte Priyadarshan et al (2015-

001966), decided 3/30/2017

• the Examiner’s findings and analysis do not sufficiently address the

significance of the ordered combination of features of the claimed invention

(Reply Br. 5). Such a “particular arrangement of elements” that creates “a

technical improvement” might satisfy Alice's second step. Bascom, 827

F.3d at 1350. Accordingly, the Appellants’ arguments are persuasive of error

in the rejection of independent claim 1 and, for the same or similar reasons,

independent claim 17.

38


Ex Parte Silva (2015-001569),

decided 3/28/2017 • we are persuaded that even if the claims are directed to an abstract idea, the

Examiner has not adequately explained why the claims fail to recite

limitations that are “significantly more” than the abstract idea itself. For

example, the Examiner does not explain why Appellant’s claimed invention

does not improve the functionality of kiosks and POS systems.

• See also Ex Parte Swift et al (2015-001275), decided 2/28 2017, same

statement

39


Ex Parte Zernik et al (2015-001044), decided 2/22/2017

• Appellants persuasively argue for error because, on the present record, the rejection

does not show that the claimed features fail to “‘transform the nature of the claim’ into

a patent-eligible application.” Alice, 134 S. Ct. at 2355. As explained by the

Appellants, on account of the ordered combination of the recited features, a call

center agent “may be informed in real time regarding which information related

to the customer is most valuable to the company in order to determine the

product which has the highest probability to be purchased by the customer of

a specific call.” Appeal Br. 4; see also Reply Br. 4. Although the rejection mentions a

“combination of elements” (Answer 2), there are no findings in the record

indicating that these real-time activities constitute generic computer functions

— or, for that matter, any analysis of whether the particular claimed

combination might nevertheless yield a patent-eligible application of the

purported abstract idea. See Bascom

40


Ex Parte Hollander et al (2015-001928), decided

1/30/2017 • Putting aside whether the Examiner erred in finding that the claims are directed to the

abstract idea of account settlement, we are persuaded that even if the claims are

directed to an abstract idea, the Examiner has not adequately explained why the

claims fail to recite limitations that are “significantly more” than the abstract

idea itself. For example, the Examiner does not explain why Appellants’ claimed

invention does not improve the functionality of the point-of sale terminal (“POS”) itself,

or why the claimed invention would not be considered an improvement in the

technical field of electronically processing transaction information. Instead, the

Examiner summarily concludes, without any analysis, that the limitations

beyond the abstract idea are “merely instructions to implement the abstract

idea on a computer and require no more than a generic computer to perform

generic computer functions that are well-understood, routine and conventional

activities previously known to the industry” (id. at 3).

41


Ex Parte Mecilati (2015-002481), decided 2/23/2017

• the Examiner does not sufficiently establish that the “ordered combination” of

the recited elements also fails to ‘“transform the nature of the claim’ into a

patent-eligible application.” Alice, 134 S. Ct. at 2355. “An inventive concept

can be found in the non-conventional and non generic arrangement of known,

conventional pieces,” even if these pieces constitute generic computer,

network, and internet components. Bascom Global Internet v. AT&T Mobility

LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). As discussed above, the

Appellant explains that the claimed architecture (i.e., the ordered

combination and arrangement of the recited elements) provides a

particular technical advantage. And, as also discussed above, the

Examiner does not persuasively challenge the Appellant’s position on

this matter.

42





more

• Mental steps is at odds with claim requirements

43


Ex Parte Stefik et al (2015-001222), decided 1/27/2017

• Although the Examiner finds that claim 1 amounts to “a method of organizing human activities”(Answer 4), the Examiner does not identity what “human activities” are purportedly being “organized” by claim 1. Moreover, the Examiner’s finding that the steps of claim 1 must be performed by a computer (Answer 5 () the claimed steps “requir[e] no more than a generic computer to perform generic computer functions”)) is at odds with the determination that claim 1 is “a method of organizing human activities” {id. at 4 (emphasis added). Further, the Examiner’s statement that “claim 1 includes an abstract idea” (id. (emphasis added)) injects uncertainty as to “whether the claims at issue are directed to [a] patent-ineligible concept^ ],” per Alice’s framework. Alice, 134 S. Ct. at 2355 (emphasis added). After all, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Id. at 2354 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94 (2012)). Therefore, the Examiner has not established sufficiently that the claimed subject matter is directed to an abstract idea in accord with Alice.

44


Ex Parte Kotanko et al (2015-006699), decided

3/16/2017 • Independent claim 1 is directed to identifying a patient undergoing

hemodialysis at increased risk of death, by identifying a change in rate of change of a monitored clinical or biochemical parameter associated with an increased risk of death of a patient, and then treating the identified patient to decrease the risk. Although the claim includes steps that can be performed mentally, “treating the patient... to decrease the patient’s risk of death” is not a phenomenon of nature, mental process, or abstract intellectual concept. This is a specific type of treatment, as opposed to, for example, treating only to alleviate pain. The claim as a whole is directed to more than just steps capable of being performed mentally.

• Therefore, the claim, considered as a whole, is not directed merely to an abstract idea, as defined under step one of the Alice analysis, because it includes treating a patient to reduce a risk of death.

45


Ex Parte Mattiola et al (2014-006739),

decided 3/7/2017

• However, we are unable to see how one can mentally, for example,

“regenerat[e] uncontaminated collected spent by incorporating product

into the uncontaminated collected spent” (claim 1). Nor do we see said

step as insignificant given its necessity for the process to accomplish one of its

goals; that is, to solve a problem with contaminated spent (see Spec., e.g.,

para 9).

• as explained in Bilski (see the passage reproduced above), physical

transformation of physical objects or substances is patent-eligible

subject matter. Accordingly, physically saturating or mixing per se are not

necessarily patent-ineligible.

46





more

• Mental steps is at odds with claim requirements

• Novelty / Problem-Solution

47


Ex Parte Fernandes (2015-005177), decided 2/27/2017

• The claimed subject matter involves a computerized payment system but all

the claims narrow its scope to a “closed-loop payment system.”

• The record supports finding a focus of the invention — that is, when reading

the claims as a whole in light of the Specification — to be on solving a problem

with the way payment systems control transaction information.

• And the advance over the prior art is not simply “generating transaction code

and using the transaction code to create a locking rule for future transactions”

(Ans. 3) but is an unconventional improvement in the mechanism by

which payment systems control transaction information.

48


Ex Parte Sutton-Shearer (2015-003977), decided

2/24/2017 • The record supports finding the focus of the invention — that is, when reading

the claims as a whole in light of the Specification — to be solving a

problem with the way social networks handle private information, not privacy

per se. The problem with controlling private information in social networks is

not itself necessarily patent-ineligible. And the advance over the prior art is

not simply “managing the privacy of content posted on a social network”

(Ans. 8) but in an improvement in the mechanism by which social

networks manage information privacy. For these reasons, we do not find

the record to adequately support a determination that “the claims at issue are

directed to one of those patent-ineligible concepts,” such as an abstract idea

(Alice, 134 S. Ct. at 2355) as the Examiner found.

49


Ex Parte MACKAY (2014-009963), decided 1/31/2017

• We find that the rejected claims are not directed to an abstract idea. Claim 1 requires,

inter alia, an automotive vehicle having an antenna and a processor. The processor is

configured to cause the buffered records to be wirelessly transmitted via the antenna

on a last-in first-out basis if the signal strength is greater than a first predetermined

threshold, and (iv) cause the buffered files to be wirelessly transmitted via the

antenna if the signal strength is greater than a second predetermined threshold.

Here, the claim is rooted in technology. We, thus, find that, when considered as a

whole, claim 1 is directed to a technological improvement for an automotive

vehicle by managing the transmission of data records using different

thresholds depending on the size of the information to be transmitted: the

smaller the size of the information to be transmitted, for example, the lower the

threshold; the larger the size of the information to be transmitted, the higher the

threshold. (Specification 3:11-15; See McRO, Inc. v. Bandai . . . )

50


Ex Parte Bluth (2014-001513), decided 1/30/2017

• We find that the rejected claims are not directed to an abstract idea. Claim 31

requires, inter alia, receiving one or more pieces of diagnostic information from

a user of a kiosk system; transmitting audio and video, by a real-time

communication system; receiving a prescription for a drug, the prescription

issued by the health care professional based on the personal health record,

the one or more pieces of diagnostic information, and the audio and video

from the user. We, thus, find that, when considered as a whole, claim 31 is

directed to a technological improvement for using a managed health

system to fill prescriptions by using, inter alia, a kiosk, audio and video

signals, and a real time communication system. See McRO

51


Ex Parte Ferber et al (2015-002917), decided 1/30/2017

• Although advertising practices have been found to be an abstract idea (see Ultramercial, Inc. v. Hulu, LLC, 774 F.3d 709 (Fed. Cir. 2014)), our reviewing court has also considered whether the focus of a claim is to computer-related technology in evaluating whether a claim is an abstract idea. Enfish, LLC v. Microsoft Corpp., 822 F. 3d 1327, 1334—1339 (Fed. Cir. 2016); DDR, 773 F.3d at 1257 (Fed. Cir. 2014).

• The Specification’s discussions support that the claims are not only directed to Internet-specific interactions, but also, as the Appellants argue, that the claims are directed to actions “different than convention and routine Internet actions,” because of optimization of ad selection for Internet-delivered advertisements in a manner that has not been demonstrated to be a routine or conventional use of the Internet.

• We determine that, even if the claims were to be deemed to be directed to an abstract idea, under the second step of the Alice analysis, the weight of the evidence supports that the claims are directed to “significantly more” than an abstract idea.

52


Ex Parte Baym et al (2015-004608), decided 1/30/2017

• Claims 1 and 69, thus, limit their scope to the use of specific medical test devices, encompassing in their scope a device that can detect color. As such, we find that the claims prevent preemption of all automatic evaluation of biological samples, because the claims are narrowly tailored to require specific technological methods.

• It is clear that the claims require a specific claimed medical test device that improves “the relevant technology” of evaluating biological samples using an automated evaluation module to evaluate information from the claimed, prior-art medical test devices, which is an improvement over requiring a human to interpret the color of a test strip, for example. (Id.). The claims, therefore, do not recite an abstract idea, because they improve an existing technological process of using test strips and similar medical test devices.

53


Ex Parte OSTROVSKY-BERMAN et al (2015-002450),

decided 1/17/2017 • Claim 1 is focused on a specific asserted improvement in automatic image

segmentation, i.e., the automatic generation of a graph that maps paths of

vessels in a network obtained from a medical image. “The computer here is

employed to perform a distinct process to automate a task previously performed by

humans.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.

Cir. 2016). Like the automatic animation technique in McRo, “the automation goes

beyond merely ‘organizing [existing] information into a new form’ or carrying out a

fundamental economic practice.” Id. at 1315 (quoting Digilech Image Techs., LLCv.

Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)). Here, the invention

provides a solution to a technological problem in image segmentation that is

less sensitive to noise, prevents inclusion of erroneous paths in the network,

and prevents elimination of correct paths in the network. See Spec., pp. 11—12.

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Ex Parte Winterer et al (2015-002753), decided 1/9/2017

• We are persuaded by the Appellants’ argument that the claims are not, by themselves, an abstract idea in the form of a fundamental economic practice, as asserted by the Examiner, at least in part because the claims recite a step for “automatically initiating a direct debit.” Reply Br. 2-4.

• Initiating a direct debit is described in one example in the Specification as debiting a cardholder’s demand-deposit account, and crediting the card issuer’s account, via a transfer of funds across the Automated Clearing House network (ACH), based on prior agreements of the cardholder and issuing bank. Spec. para.15. We find that such a procedure is not inherent to a “revolving credit account.” Accordingly, we find that independent claims 21 and 27 are each directed to “a revolving credit account that includes automatically initiating a direct debit,” and we are unable to determine definitively whether “a revolving credit account that includes automatically initiating a direct debit,” as a whole, is a fundamental economic practice.

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Questions to Ask when Responding

• Did the Examiner ignore main limitations of the claim that describe the

improvement?

• Did the Examiner actually address the ordered combination of steps that allow

for the improvement?

• Is the alleged abstract idea not longstanding or otherwise unconventional?

• Do the claims solve a problem specific to the technology?

• Do the claims include a new hardware device or physical result?

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• An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

25 U.S.C. 112(f)

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Claim 8, US 6,155,840:

A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:

* * *

a distributed learning control module [1] for receiving communications transmitted between the presenter and the audience member computer systems and [2] for relaying the communications to an intended receiving computer system and [3] for coordinating the operation of the streaming data module.

WILLIAMSON V. CITRIX ONLINE, LLC (FED. CIR. JUNE 16, 2015)

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• “distributed learning control module” limitation was in MPF format.

• “Module” (a “well-known nonce word”) replaced “means.”

• Cf. “mechanism,” “element,” “device”

• Three performed functions were recited.

• No description of structure, or how the distributed learning control module interacted with other elements to connote structure.

FUNCTIONAL LIMITATION?

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• General purpose computer insufficient: was there a special purpose computer programmed to perform specific functions?

• The Specification described, but did “not set forth an algorithm for performing the claimed functions.”

INDEFINITE FUNCTIONAL LIMITATION?

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• “[E]xpressly overrule[d]” the requirement for a “heightened evidentiary showing” and “the characterization of [the] presumption as ‘strong’.” (En banc.)

• New rule: claims are presumed not to invoke 35 U.S.C. § 112(f) but the presumption can be “overcome and § 112[f] will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function’.”

• Rationale: the old rule had inappropriately “shifted the balance struck by Congress in passing § 112[f] and has resulted in a proliferation of functional claiming untethered to § 112[f] and free of the strictures set forth in the statute.”

REDUCED PRESUMPTION THAT 112(f) DOES NOT APPLY

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• Problem-solution approach.

• Don’t be you own lexicographer.

• The new importance of preambles.

• Defining terms.

• Take care with functional claiming.

• Talk to examiners.

PRACTICE TIPS

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• Why: claims pass Alice if they provide a technical solution to a technical problem.

• Old thinking: state a problem or need very broadly if at all. The drafter should take care that claim scope is not limited to solving a stated problem to avoid limiting claim construction.

• New thinking: the drafter should state a technical problem that is being solved to limit claim scope to a technical solution.

• Example: “Computers running ABC apps typically receive data in X format. This is a problem because web browsers need data in Y format. Disclosed herein is receiving data in a computer in X format, and more quickly converting the data to Y format.”

• Authority: Ultramercial (Mayer), DDR Holdings, Enfish; Epicor Software Corp. v. Protegrity Corp., (PTAB CBM April 18, 2016).

THE PROBLEM-SOLUTION APPROACH

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• Why: district courts in particular are often guided by the description of subject matter in a claim preamble.

• Old thinking: Minimalist preamble to avoid limiting claim construction.

• New thinking: Use the preamble to characterize the claimed subject matter.

• Example: “”A system for improved memory allocation, comprising . . .” or “A system for improved retrieval of data stored in a computer memory, comprising . . .”

• Authority: A lot of district court cases!

CLAIM PREAMBLES

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• Why: Claim terms that are not terms of art invite the problems of functional claiming, plus indefiniteness attacks.

• Old thinking: invented terms provide latitude in claim construction, so use them.

• New thinking: invented terms provide latitude for invalidity attacks, so avoid them.

• Examples:

• “a computer” and not “a weather analyzer”

• a “lidar sensor” or “a camera,” and not “an image data mechanism”

• Authority: for starters, Williamson and Alice

USE TERMS OF ART

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• Why: claim terms can be read as directed to an abstract idea if they can be read to encompass non-technical features.

• Old thinking: the drafter should be careful in defining terminology in a way that could subsequently limit a claim construction, i.e., an attempt to accuse an infringing product.

• New thinking: the drafter should define terms to preclude non-technical definitions from being included in claim scope.

• Example: claim recites “receiving image data.”

• Define image data so it could only be found in a machine environment, e.g., “image data” means “a digital representation of an image, i.e., a pixel map or other representation of an image including numeric values stored a file and usable to render an image in an electronic display.”

• Authority: E.g., Epicor Software Corp. v. Protegrity Corp., CBM2015-00006 (PTAB April 18, 2016).

EXPLICITY DEFINE KEY TERMS

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• Why: the less detail you put in your process flow the more likely you are to suffer from functional descriptions.

• Old thinking: none – detailed process flows have always been a good idea.

• New thinking: see above: supplement “black boxes” in block diagrams with as much detail as possible concerning algorithms implemented in the black boxes.

• Example:

• Claims recite an “actuator:” include flowcharts and, if appropriate, other diagrams, describing operation of the “actuator.”

PROVIDE DETAILED PROCESS DESCRIPTIONS

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• Why: possible 112(b) and (f) indefiniteness, but also potential problems under Alice (mere recitation of a “generic device” does not save patent-eligibility).

• Old thinking: Generic terms are broad and therefore better.

• New thinking: generic terms remain unavoidable and are often recommended (see above), but if used need to be defined.

• Example: generic device is relied on.

• Describe the device as a particular kind of computer programmed in a particular way.

AVOID “NONCE” WORDS

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• If claiming functionality is unavoidable, then claim only the functionality, and not any structure.

• Claim 8 of the ’840 patent in Williamson recited “a distributed learning and control module for receiving communications transmitted between the presenter and the audience member computer systems.”

• Go all-in on reciting functionality: What if claim 8 of the ’840 patent in Williamson had simply recited “receiving communications transmitted between the presenter and the audience member computer systems”?

IF YOU CAN’T AVOID IT, EMBRACE FUNCTIONALITY

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• Interview! • Different art units apply Mayo and Alice differently.

• An amendment you might not think of could be sufficient to cure the rejection.

• Arguments: • Non-abstractedness flows from elements not taught or suggested by

the prior art.

• Present claims are like a specific Fed. Cir case (or Example __ from the Guidelines).

• Claims solve a technical problem.

RESPONDING TO EXAMINERS

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Charles Bieneman

BEJIN BIENEMAN PLC

(313) 244-0676

[email protected] WEBSITE: b2iplaw.com

BLOG: SWIPREPORT.com

Isaac Slutsky

BROOKS KUSHMAN P.C.

(248) 226-2733

[email protected] WEBSITE: brookskushman.com

THANK YOU!

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