1. 1. Post-Alice Claiming and Prosecution in the United States Jim Hallenbeck Patent Attorney | Principal Schwegman, Lundberg & Woessner, P.A. 1.612.373.6938 jhallenbeck@slwip.com
2. 2. Agenda Interim and Preliminary Examination Instructions Traversal Strategy Claiming Strategy 22
3. 3. 3 Interim and Preliminary Examination Instructions
4. 4. Interim and Preliminary Examination Instructions Preliminary Examination Instructions issued June 25, 2014 following the Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Intl, et al http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf Interim Examination Instructions issued December 16, 2014 http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf 44
5. 5. Interim and Preliminary Examination Instructions Under Alice, the same analysis is used for all judicial exceptions and claim categories, see MPEP 2106(I). 55
6. 6. Interim and Preliminary Examination Instructions First determine whether the claim falls within one of the four categories of eligible subject matter, i.e., process, machine, article of manufacture, composition of matter. If not, the claim is not patent eligible. If so, consider the judicial exceptions. 66
7. 7. Interim and Preliminary Examination Instructions Under Alice, considering the judicial exceptions is a two-pronged analysis. Prong 1 Determine whether the claim is directed to a judicial exception/abstract idea. If not, the claim is eligible otherwise proceed to Prong 2. Prong 2 Determine whether any claim element, or combination of claim elements, is sufficient to ensure that the claim as a whole amounts to significantly more than the abstract idea itself. If so, the claim is eligible otherwise ineligible. 77
8. 8. Interim and Preliminary Examination Instructions Prong 1 Is the claim directed to a judicial exception/abstract idea? At some level, all inventions embody, use, reflect, rest upon, or apply abstract ideas and the other judicial exceptions. NOTE: An invention is not ineligible simply because it involves an abstract idea Examples of Abstract ideas listed in Alice are: Fundamental economic practices; Certain methods of organizing human activities; [A]n idea of itself; and Mathematical relationships/formulas. 88
9. 9. Interim and Preliminary Examination Instructions Prong 1 Determine whether the claim is directed to a judicial exception/abstract idea. If not, the claim is eligible otherwise proceed to Prong 2. I.e., the claim is directed to a judicial exception/abstract idea. 99
10. 10. Interim and Preliminary Examination Instructions Prong 2 Does any claim element, or combination of claim elements, amount to significantly more than the abstract idea itself? Considering the claim as a whole, are there any elements or combinations of elements that show a patent-eligible application of the abstract idea from Prong 1? 1010
11. 11. Interim and Preliminary Examination Instructions Prong 2 (cont.) Considering the claim as a whole, are there any elements or combinations of elements that show a patent- eligible application of the abstract idea from Prong 1? Elements in Alice that may qualify as significantly more: Improvements to another technology or technology field; Improvements to the functioning of the computer itself; and Meaningful elements beyond generally linking the use of an abstract idea to a particular technological environment. 1111
12. 12. Interim and Preliminary Examination Instructions Prong 2 (cont.) Considering the claim as a whole, are there any elements or combinations of elements that show a patent- eligible application of the abstract idea from Prong 1? Elements in Alice that do not qualify as significantly more: Apply (or equivalent) the abstract idea; Mere instructions to implement an abstract idea on a computer; and Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. 1212
13. 13. 13 Traversal Strategy
14. 14. Traversal Strategy At this point, there is no silver bullet for patent eligibility of computer implemented inventions. Generic computing devices at this point are insufficient to make a computer implemented invention claim patent eligible. Recent court decisions have been mixed and inconsistent. So what do we do? 1414
15. 15. Traversal Strategy The simple answer is to: 1. Prong 1 Address the concept of an abstract idea that the claim is or may be considered to be directed; and 2. Prong 2 Ensure there are claim elements drawn to significantly more than an abstract idea, or other judicial exception, itself. 1515
16. 16. Traversal Strategy Prong 1 Even though a claim may be directed to an abstract idea, as seemingly all claims are to some degree, consider: Does the claim pre-empt use of the abstract idea of the claim or basic tools of scientific or technological work? [I]n applying the 101 exception, [courts] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into patent eligible inventions. Alice, 134 S. Ct. at 2354 (internal citations omitted). The concern that drives the exclusionary principle [i]s one of pre-emption. Id. That is, where a patent would pre- empt use of basic tools of scientific and technological works, i.e., laws of nature, natural phenomena, and abstract ideas, the patent would impede innovation more than it would tend to promote it, thereby withdrawing the primary object of the patent laws. Id. Helios Software, LLC v. Spectorsoft Corp. (D. Del. Sept. 25, 2014) C.A. No. 12-081-LPS. The premise behind the judicial exceptions to patent eligibility is pre-emption. If a claim does not pre-empt all uses of the judicial exception and the claim is within a statutory class, the claim is patent eligible. 1616
17. 17. Traversal Strategy Prong 1 The previous example is applicable where an asserted abstract idea is accurate, but the claim language does not preempt all practices of the abstract idea. But what if the asserted abstract idea is not accurate? Consider whether the purported abstract idea is tied to the claim language. In determining whether a method or process claim recites an abstract idea, we must examine the claim as a whole and taking into account all claim elements in combination. Alice, 134 S. Ct. at 2355 n. 3; and U.S. Bancorp v. Solutran, Inc. (CBM 2014-00076, Aug. 7, 2014). For a rejection to be sustained, there must be an adequate tie between claim language and the abstract concept. PNC Bank N.A. et al. v. Secure Access LLC (PTAB Case CBM2014-0010, Sept. 9, 2014). The asserted abstract idea was authentication stamps on paper documents. The claims related to insertion of authentication data, referred to as an authentication stamp into a dataset to validate the dataset. This is a bit nuanced, but shows there is a fine line, at least at the PTAB, and that traversing an asserted abstract idea, while seemingly a narrow argument, is not frivolous and may prevail. 1717
18. 18. Traversal Strategy Prong 1 The premise behind the judicial exceptions to patent eligibility is pre- emption. If a claim does not pre-empt all uses of the judicial exception and the claim is within a statutory class, the claim is patent eligible. Thus, consider whether an asserted abstract idea of a Section 101 rejection is accurate. If not: Traverse the asserted abstract idea; and/or The claim is not directed to a fundamental economic practice, certain methods of organizing human activities, [A]n idea of itself, or a mathematical relationship/formula. The asserted abstract idea fails to contemplate the claim as a whole as there is not an adequate tie between the claim language and the purported abstract idea. If there is no abstract idea/judicial exception or the asserted abstract idea is not tied to the claim, the claim is not pre- emptive and the rejection is deficient. Suggest a more accurate abstract idea/judicial exception that is not pre-empted by the claim. 1818
19. 19. Traversal Strategy Prong 1 When a claim rejection is premised on an assertion the claim is directed to an abstract idea itself: Consider whether the asserted abstract idea is one of a principle, an original cause, or a motive per footnote 3 of the Preliminary Examination Instructions. If not, establish this by argument such that the abstract idea is deficient and Prong 1 fails. 1919
20. 20. Traversal Strategy Prong 2 Ensure there are claim elements drawn to significantly more than the abstract idea, or other judicial exception, itself. When claims provide a specific computing solution for a computing problem, these claims should generally be patentable, even if the novel elements are mathematical algorithms. California Institute of Technology v. Hughes Communications (C.D. Ca. Nov. 3, 2014) Ca. Case No. 2:13-cv-07245-MRP-JEM (see pages 26, 28). Despite being generally directed to abstract concepts, the asserted claims contain meaningful limitations that represent sufficiently inventive concepts, such as the irregular repetition of bits and the use of linear transform operations. Although these limitations are mathematical algorithms, these algorithms are narrowly defined, and they are tied to a specific error correction process. These limitations are not necessary or obvious tools for achieving error correction, and they ensure that the claims do not preempt the field of error correction. The continuing eligibility of this patent will not preclude the use of other effective error correction techniques. Therefore, all the asserted claims are patentable. This is a prime opportunity for traversing a Section 101 rejection. Where your claim includes elements not required for successful performance of an abstract idea, the abstract idea itself is not preempted. 2020
21. 21. Traversal Strategy Prong 2 Ensure there are claim elements drawn to significantly more than the abstract idea, or other judicial exception, itself. This strategy is consistent with DDR Holdings, LLC v. Hotels.com L.P., et al. (Fed. Cir. Dec. 3, 2014)(distinguishing over Ultramercial, Inc. v. Hulu LLC (Fed. Cir. Nov. 14, 2014)). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result a result that overrides the routine and conventional. It is also clear that the claims at issue do not attempt to preempt every application of the idea. Again, this is a prime opportunity for traversing a Section 101 rejection. Where your claim includes elements not required for successful performance of an abstract idea, and these elements are not conventional, the abstract idea itself is not preempted. 2121
22. 22. Traversal Strategy Prong 2 Considering the guidance of Alice itself, consider whether the claim provides: Improvement to another technology or technology field; Improvement to the functioning of a computer itself; or Meaningful elements beyond generally linking the use of an abstract idea to a particular technological environment. Where any of these are true, the claim provides significantly more than the abstract idea itself. 2222
23. 23. Traversal Strategy Prong 2 Also: Frame the claim such that it provides a technical solution, preferably to a technical problem. Ensure the claim is not entirely generic in the sense that you are only claiming use of some technical widget to achieve some desired result. Instead, claim how to manipulate the technical widget to achieve the desired result. In traversing a rejection, consider the abstract idea and whether every claim element is required to perform the abstract idea. For each extra, non-conventional and non- generic element, consider the impact of the element on system performance, simplification, greater accuracy, etc. Then argue: Non-preemptive, and The improvement. Tip: To find such extra elements not required by the abstract idea, look to what is missing in the main prior art reference. 2323
24. 24. Traversal Strategy Prong 2 Also consider Diamond v. Diehr, 450 U.S. 175, 1981. In Diehr, the computer was used to perform calculations to produce an output related to cured rubber and the claim was held patent eligible. Arguing by analogy that the claim is more like Diehr and less like the other Supreme Court decisions holding claims ineligible has been successful for some. 2424
25. 25. 25 Claiming Strategy
26. 26. Claiming Strategy Consider your claiming strategy as a whole. In recent years, a commonly employed strategy has been to start broad and pursue narrower coverage in continuation and divisional application filings. In view of the current state of Section 101 practice, turn that around and go for the tailored coverage first and then broaden via continuation and divisional application filings. 2626
27. 27. Claiming Strategy Regardless of what the current Guidelines state and how closely tied to the Alice decision they may be, the current Guidelines are being aggressively applied in rejecting claims under Section 101 as being directed to ineligible subject matter. But, this is a dynamic issue in United States Patent Law. Thus, it may be advisable to delay prosecution, where possible, until the law has settled and experience has been gained. Before replying to rejections and perhaps before filing an application: Consider filing provisionally to buy time to modify claims prior to examination; Wait until the three-month date to reply; and If appeal is an available option and considering the backlog of appeals, appeal, monitor the developing state of Section 101 practice, and file an RCE to return the application to prosecution when prudent. Also, consider preliminary amendments prior to examination for pending utility applications in view of the developing state of Section 101 practice. 2727
28. 28. Claiming Strategy When drafting and amending claims: Consider what the technical effect of the subject matter is and whether the subject matter: Improves system performance; Enhances security; Presents new user interfaces; Improves another technology or technology field; or Applies an abstract idea, mathematical formula, or natural phenomena in a specific manner for a specific purpose or result. If so, ensure the claim is carefully tailored to reflect this and not in an overly broad or generic manner such that the claim may be considered preemptive. Include strategically focused independent claims with regard to the most important embodiments. 2828
29. 29. Claiming Strategy Consider the process start to finish or top-down. Then focus on where the technical intelligence lies. Tailor the claim to focus on this/these specific point(s) of technical intelligence and ensure the specification includes thorough description thereof not only for adequate enablement, but also to provide enhanced amendment opportunities. Also, these are the elements that are most likely to be outside of what is required to perform an abstract idea. 2929
30. 30. Claiming Strategy By following this strategy, it is quite likely you will eliminate superfluous elements leaving a technically-focused claim. Personally, I find this strategy very useful when dealing with business-related inventions. If you claim a business process from start-to-finish, the claim may be technically and contextually accurate. But the context may distract from the technical importance and full breadth of the invention. Field of use limitations are unlikely to help a claim overcome a Section 101 issue, so including non- technical contextual limitations are unlikely helpful and unduly limiting. While there may be a business process involved, we win the day by focusing on the technical merits. 3030
31. 31. Claiming Strategy Consider filing method and apparatus claims in separate applications to help avoid possible disregard of apparatus claims with similar elements as method claims held to be ineligible. Dont forget about design patents for user interfaces. 3131
32. 32. 32 Thank you Jim Hallenbeck Patent Attorney | Principal Schwegman, Lundberg & Woessner, P.A. 1.612.373.6938 jhallenbeck@slwip.com