During patent prosecution, the US Patent and Trademark Office
(USPTO) may reject claims in a patent application as being directed
to an abstract idea as a judicial exception to patent eligible
subject matter under 35 USC §101. The USPTO is
considering cases on an individual basis, and has issued
examination guidelines for patent subject matter eligibility (see
USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility),
following the Federal and Supreme Court rulings in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al. How
do we, as patent practitioners, apply factual findings to argue for
eligibility of subject matter in claims?
In a previous article by the present author, Arguing a Post-Alice
§101 "Abstract Idea" Rejection during Patent
Prosecution, the use of factual findings based on 35 USC §102
(anticipation) and/or 35 USC §103 (obviousness) analysis in
answer to a 35 USC §101 "abstract idea" rejection
was discussed, and various lines of inquiry and analysis were
developed. Reg Ratliff, Esq., a colleague of mine here at the
Silicon Valley branch of Womble Carlyle Sandridge & Rice has
developed a specific model for a reply to an Office action
regarding such a rejection, and has given permission for me to
share and expound upon this. Below is an abstraction or
template for a response to an Office action.
Setting up an example scenario, suppose the USPTO, during
examination of a patent application, has issued an Office action
rejecting the claims as patent ineligible subject matter, but has
indicated some (or all) of the claims would be allowable under 35
USC §102 and 35 USC §103 provided the rejection under 35
USC §101 could be overcome. Or, the claims are rejected
under 35 USC §102 and/or 35 USC §103, with various
references cited. The patent practitioner finds a good, solid
argument, or amends the claim(s) and then argues, that there are
limitations in the claims that are not shown in the cited
references. In these examples, the patent practitioner can
present, in a reply, the USPTO acknowledgment that specified claim
limitations are allowable, or the claim limitations argued by the
patent practitioner as not found in the cited references, as
factual findings. Let us call these the "distinguishing
limitations", as these limitations distinguish from that which
is previously known, e.g., in the cited references.
Next, the patent practitioner can state, in the reply, the
limitations which the Applicant acknowledges as known. These
could be foundation elements, such as a processor (e.g., absent the
novel instructions for performing the method), a server (absent the
novel programming), a network, a substrate, a transistor (e.g.,
absent the novel circuit connections), a gear, cam or lever (e.g.,
absent the novel mechanical connections), etc. By separating
out the claim elements into a known foundation and the
"distinguishing limitations", the patent practitioner is
setting up the argument.
The Office action, in this example, is seen to frame the claims in
terms of an alleged abstract idea. One main argument to be
made in a reply is that, while some or all of the foundational
limitations can be found in the alleged abstract idea, the
distinguishing limitations cannot. Particularly, the factual
finding of allowable subject matter in the distinguishing
limitations is a showing that the distinguishing limitations are
not generally known, are not routine and conventional, are not
found in the cited references, and are not found in the alleged
abstract idea. The distinguishing limitations constitute the
"significantly more" than the abstract idea, and
constitute the "significantly more" than the instruction
to implement the abstract idea on a generic computer (or a generic
widget or whatever is being cited in the Office action).
The argument is then summed up as factual findings that the claim
includes limitations not found in the alleged abstract idea, and
that such distinguishing limitations, which are not generally
known, show that the claim is significantly more than the abstract
idea and significantly more than just implementing the abstract
idea on a generic computer. The factual findings can also be
presented as a showing that the claims do not attempt to preempt
essentially all possible uses of the abstract idea, as the claims
have narrower limitations, viz., the distinguishing limitations.
And, the factual findings can be presented as a showing that
the claims include concrete (i.e., non-abstract) limitations (these
may be part of the known foundation), which are not part of the
alleged abstract idea, and that the concrete limitations plus the
distinguishing limitations (there may be some overlap) form a claim
to a specific concrete article, or method involving a specific
concrete article, etc., which, again, is not shown in the alleged
abstract idea. Further arguments can be developed if there
are factual findings that support that the claimed system, method
or article shows improvements to computing technology or other
technology, and that such improvements are not shown in the alleged
abstract idea or in the known, cited art. In all of this, the
patent practitioner emphasizes the factual findings.
Per a previous article by the author, "A Powerful Tool:
Challenging Assertion during Patent Prosecution", a USPTO
attempt to dismiss relevant arguments as unconvincing, or an Office
action that is unresponsive to factual findings, can be challenged
as not properly Officially Noticed or not properly based upon
common knowledge, per MPEP (the Manual of Patent Examining
Procedure) 2144.03 "Reliance on Common Knowledge in the Art or
'Well-Known' Prior Art" section C, subtitled "If
Applicant Challenges a Factual Assertion as Not Properly Officially
Noticed or Not Properly Based Upon Common Knowledge, the Examiner
Must Support the Finding with Adequate Evidence". A
USPTO Examiner assertion that the claims of the Applicant are not
significantly more than an instruction to apply an alleged abstract
idea to a generic computer (or other machine or article), or other
35 USC §101 rejection, can be challenged as not factually
based, and not properly officially noticed nor properly based upon
common knowledge, using the above factual findings.
By properly applying and properly insisting upon factual findings
in a 35 USC §101 subject matter inquiry, the patent
practitioner and the response to the Office action can argue for
patent eligibility of the subject matter of the claims logically,
with fact-based building blocks on a fact-based foundation.
Such an approach also formally sets up for an appeal, should
the subsequent Office action still reject the claims as patent
ineligible subject matter under 35 USC §101. And, the
prosecution history records all of the above, should a court
challenge occur. This is part of the art of patenting.
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.