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Shifts in the landscape for patent application claims of software and computer-based inventions, brought about by the Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and subsequent actions in the courts, continue to change the examination process and challenge patent practitioners to come up with effective strategies when facing the 35 USC §101 rejection of claims allegedly directed to an abstract idea. Here are some tools we have found useful in responses to Office actions during examination of claims for software or computer-based inventions, and which may prove useful for appeals.
A situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea. These rejections often appear to be nothing more than a form paragraph, with a small number of claim terms and/or part of the claim preamble pasted in.
The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations. The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered. The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed. Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.
Another situation seen in Office actions is that the Examiner cites specific actions from method claims, such as “receiving data”, “storing data”, “moving data”, “copying data”, etc., states that these are abstract ideas, and asserts that any of these could be performed as mental steps and it is not clear that a machine is performing any of them. One approach, in reply, is to amend the preamble of the claim to strongly tie the claim to a machine. For example, instead of claiming “1. A method [of performing some function], comprising:”, the claim can be amended to, “1. A method [of performing some function], performed by a processor [or server or computer, etc.] executing instructions in tangible memory, the method comprising:” This approach to method claims borrows language from the more or less standard language for tangible media claims, such as “1. A tangible, non-transient, computer-readable media having instructions thereupon which when implemented by a processor cause the processor to perform a method comprising:”
The accompanying argument, in the response to the Office action or appeal, is that the amended claims clearly state that the method is being performed by a machine, namely the processor, server or computer, not a human being. The specification describes the processor, server or computer as a physical machine, or a virtual machine implemented and physical components, which, in both cases, is a machine. Tangible memory is also a machine, or part of a machine. And, the amended claims clearly state that this machine is performing the method, not just part of the method. Since these steps or actions in the method are required in the claims to be performed by a machine, the claims recite statutory subject matter under 35 USC §101.
Here is another argument, which can be used when the Office action states there are claims that would be allowable if the rejection under 35 USC §101 can be overcome. The Office action finding of allowable subject matter is summarized, in a reply to the Office action, as a factual finding that the claims include limitations that are not commonly known in the art and therefore show inventive concept. The argument continues, that the combination of limitations tying the claim to a machine, which is statutory subject matter, and the claim as a whole (or specific subset of limitations) showing inventive concept, constitutes “significantly more than” the alleged abstract idea(s) of [here, quote what the Examiner has said is the abstract idea to which the claim is directed]. This delivers a solid one-two punch in favor of finding statutory subject matter.
Some software or computer-based inventions involve virtual computing, virtual machines, virtual memory, virtual storage, etc. We have seen these rejected as non-statutory subject matter, because they are abstract ideas not tied to a machine. Amending claims to recite, “a virtual [processor, machine, memory, storage, etc.] implemented with physical computing resources” fixes this problem by explaining that, at some level, the claimed machine is real and bound to the physical.
Claims that solve a particular technological problem should be argued as doing so. That is a strong argument in the category of reasons for finding patent-eligible subject matter. Also, claims that improve efficiency or operation of a computer, or another technology different from the main technology to which the claims are directed, should be highlighted and so discussed. It is worth a deep look through the specification to see what can be uncovered in these areas, and used for arguments in a response to the Office action.
Examiner interviews can be really helpful in the process of sorting through a 35 USC §101 rejection. By discussing the USPTO two-step abstract ideas analysis process with the Examiner, along with particulars of the rejection and the claims, the patent practitioner can get a read on which approach(es) may be effective for a response to the Office action. Even if the sense is that a particular Examiner won’t budge from a rejection, this may provide guidance that setting the response up for a later appeal is the way to proceed.
Finally, what should the patent practitioner do when faced with a repeated rejection under 35 USC §101, especially one that is unresponsive to facts and arguments presented by the patent practitioner in a previous response? Challenge the assertions made in the Office action as not factually based, or factually incorrect. Present, as factual findings, that the claim limitations are not commonly known in the art, referring if appropriate to a discussion under a 35 USC §102 or 35 USC §103 rejection. And/or challenge the Examiner to produce a factual finding that the claim limitations are commonly known in the art and therefore do not constitute significantly more than the abstract idea, as asserted without an accompanying factual finding in the Office action. That is, challenge the Office action as alleging an unfounded assertion that is neither properly based on facts nor properly officially noticed.
Patent Prosecution Toolkit Takeaways:
- When the 35 USC §101 “abstract ideas” rejection of the claim is little more than a form paragraph, or otherwise fails to analyze all of the claim limitations and the claim as a whole, argue that the Office action has a procedural error, is improper and should be withdrawn.
- Method claims can be amended to put a machine in the preamble, borrowing from tangible media claims, so that the machine is clearly performing the method.
- Allowable subject matter can be presented as a factual finding of claiming “significantly more than” an alleged abstract idea.
- Claimed virtual machines, virtual memory etc. can be made real by amending with limitations stating that the virtual device is implemented with physical computing resources.
- Argue that claims solving a technological problem, improving efficiency or operation of a computer, or improving another technology, are to patent-eligible subject matter.
- Examiner interviews give feedback to guide response to an Office action, or appeal.
- Challenge unfounded assertions.
Chris Hall counsels clients in preparing and prosecuting patents in the electrical, telecommunications, computer software, and mechanical arts. In addition, he has 17 years of industry experience as a professional engineer, and is named as sole inventor or co-inventor on 15 granted patents. Hall is a co-author of the High-Tech Patent Agent, a blog on high-tech patent issues in Silicon Valley.
