USPTO (United States Patent and Trademark Office) rejection of a
patent claim, alleging the claim is not significantly more than an
abstract idea under 35 USC §101, is a frequent and often
frustrating occurrence during patent examination of claims in any
technology that involves computers, controllers or processors.
Here is another useful strategy the patent practitioner can
use in writing a response to an Office action, or an appeal
brief.
Suppose a USPTO examiner has written a rejection that the claims
amount to nothing more than the abstract idea of a mathematical
calculation (or other abstract idea) plus the instructions to
implement it on a generic computer, and are therefore directed to
patent ineligible subject matter. The patent practitioner
could get into a back-and-forth argument with the examiner about
whether or not claim limitations are significantly more than the
abstract idea, wasting multiple cycles of examination because
examiners can be very difficult to convince of this. One
promising approach is to argue that the claims are directed to a
specific technological solution to a specific technological
problem, as has been successful in the courts. But, even this
may not be convincing, if argued in the abstract, because, after
all, we are dealing with abstract ideas to begin with, and it is
all too easy for an examiner to dismiss an abstract argument as
"not convincing".
A concrete, bright line test can be constructed, which may sway an
examiner (or appeal board, if the rejection is appealed).
Articulate a specific technological problem that the claims
solve or are directed to solving. Analyze the claim and cite
some of the important claim limitations that are not present in the
alleged abstract idea, and explain the significance of these claim
limitations in terms of the technological problem and technological
solution. Then, compare the abstract idea, for example
"mathematical calculations" in and of itself, without the
claim limitations that extend beyond the abstract idea, to the
technological problem. Does the abstract idea in and of
itself, with or without a generic computer, solve the technological
problem? Of course not. Does the abstract idea plus the
claim limitations that extend beyond the abstract idea, solve the
technological problem. Yes, the combination of abstract idea
plus claim limitations that extend beyond the abstract idea does
solve the technological problem. This means the claim as a
whole amounts to significantly more than the abstract idea plus the
instruction to implement the abstract idea on a generic computer.
This bright line test makes it very difficult for an examiner
to prove that the claim is nothing more than an abstract idea
implemented on a computer. The examiner would either have to
prove that the additional claim limitations are mere field of use
limitations, which assertion is readily refuted through the above
analysis, or that the claim as a whole does not solve the specific
technological problem, which you have just demonstrated it does.
This carefully constructed argument passes logical rigor, and
any attempts in further patent examination to defeat it can be
addressed on a point by point basis with factually based
logic.
Takeaways
- Concrete statement of a specific technological problem that the claims solve or address lays a strong foundation for arguments of patent eligible subject matter under 35 USC §101.
- Testing to see whether the abstract idea in a claim rejection solves the specific technological problem provides a basis for comparison with the claim as a whole.
- Testing to see whether the abstract idea in combination with the claim limitations that are beyond the abstract idea solves the specific technological problem provides a comparison for the claim as a whole versus the abstract idea.
- Once the abstract idea has been compared with the claim as a whole, in light of the specific technological problem, the conclusion can be drawn that the claim is significantly more than the abstract idea with instructions to implement it on a generic computer.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
