In the wake of the Supreme Court’s Alice decision on patent subject matter eligibility, patent stakeholders have anticipated a reaction from the United States Patent and Trademark Office (USPTO) in regard to patent examination practice relative to 35 U.S.C. 101. While many interested parties hoped that Alice would settle the issue, few would argue that the issue has been settled. Indeed, the USPTO has issued guidance on patent subject matter eligibility, including training materials for patent examiners.
The latest training materials introduced by the USPTO in February 2016 include a workshop with several examples of claims disputed under 35 U.S.C. 101. The training materials are intended for use with the July 2015 examples provided in Update Appendix 1, and include an examination of two pairs of claims. While the examples are unlikely to significantly clarify the issue of subject matter eligibility, they may provide some insight into how patent examiners are considering patent claims.
The first example considers a claim directed to a method of distributing stock quotes over a network to a remote subscriber computer. The claim includes a microprocessor, and the recited functionality of that microprocessor includes filtering received stock quotes, generating a stock quote alert, formatting the stock quote alert, and transmitting the formatted stock quote alert. Because the claim recites a process, it is within a statutory category of invention. The real analysis occurs when evaluating whether the claim is directed to an abstract idea, and whether the claim includes features that render it significantly more than the abstract idea.
According to the training materials, the recited functions of receiving, filtering, generating, formatting, and transmitting are directed to an abstract idea because they can be performed mentally and are similar to abstract ideas such as organizing and storing information. The type of information being organized or manipulated is of no consequence in terms of whether the claim is any less abstract.
The recited elements of a memory to store preferences, a microprocessor to perform the aforementioned functions, and performing the functions over the Internet are elements that move the claim beyond the abstract idea. However, the training materials say that these additional elements do not provide an inventive concept because the functions are associated with generic computer functions. Therefore, the claim is deemed to be ineligible for a patent.
In the amended version of the first claim, however, additional subject matter is added. Some of the added operative language recited in the amended example claim includes:
“[W]herein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.”
This claim is still said to be directed to an abstract idea, but the issue is whether any of the recited subject matter amounts to something more than an abstract idea and whether the claim as a whole amounts to more than an abstract idea.
According to the training materials, the answers are affirmative. Why? Because, as in DDR Holdings, the recited subject matter solves a problem rooted in computer technology even if some of the individual computer components could be considered generic. The training material notes that because the recited subject matter is Internet-centric rather than simply linking the general process to the Internet, the recited limitations are meaningful enough to be patent eligible.
The difference between subject matter rooted in computer technology or an Internet-centric context and subject matter linked to a computer or Internet context in a nonmeaningful way is unclear, however. More examples may be necessary to determine a brighter line.
The second example in the training materials is directed to a method of resizing textual information within a window displayed in a graphical user interface. The method steps are reproduced below:
- generating first data for describing the area of a first graphical element;
- generating second data for describing the area of a second graphical element containing textual information; and
- calculating, by the computer, a scaling factor for the textual information which is proportional to the difference between the first data and second data.
The training materials suggest that the only features beyond the abstract idea are the computer and a window displayed in a graphical user interface. As such, the training materials teach that there should be a 101 rejection. For instruction, the training materials walk through the evaluation.
The training materials suggest that the claim is directed to the abstract idea of calculating a scaling factor from two datasets describing graphical elements with text. The additional elements recited in the method are “computer implemented,” “a window displayed in a graphical user interface,” and “the computer.” According to the training materials, the combination of those additional features does not, however, amount to significantly more than the abstract idea.
Even though a computer and some computer-related language was recited, the training materials conclude that the additional features were still generic, did not limit the method to a particular useful application, and did not confine the claim to a solution rooted in computer technology.
The same example claim is then replaced, in response to a 101 rejection, with a new claim that includes several steps expanding upon the calculation of the scaling factor, then recites scaling the text based on the scaling factor, and automatically relocates the scaled text and automatically returns the relocated scaled text with a processor. Is that enough for patent eligibility?
The claim is directed to the same abstract idea as the one it replaced, so the question is again whether the additional features recited amount to significantly more than an abstract idea. The training says yes, and the reason is that the combined computer features and their functions improve the basic display function of the computer. The specific computer features recited are:
- constantly monitoring the boundaries of the first window and the second window to detect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;
- determining the textual information would not be completely viewable if relocated to an unobstructed portion of the first window;
- automatically relocating the scaled textual information, by a processor, to the unobscured portion of the first window in a second format during an overlap condition so that the entire scaled textual information is viewable on the computer screen by the user; and
- automatically returning the relocated scaled textual information, by the processor, to the first format within the first window when the overlap condition no longer exists.
One can therefore see from these examples how to transform ineligible claims into eligible ones by adding features that amount to significantly more than the alleged abstract idea. Of course, these are only a few examples. Hopefully stakeholders will receive additional clarity in further guidance, training, or decisions. For example, see Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter