The USPTO recently released a set of examples for evaluating claims under 35 U.S.C. § 101 in view of Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S.Ct. 2347 (2014). To the bane of many patent prosecutors in the business methods, financial, and software‑related arts, patent examiners have been applying a loose interpretation of this decision to reject entire classes of patent applications. With the release of these examples, however, the tide may begin to turn.
A December Federal Register notice provided a flowchart and interim guidance for analyzing claims for subject matter eligibility, but little in the way of concrete examples. The USPTO’s release on January 27, 2014, provides examples of hypothetical claims deemed patentable under § 101. One example, directed to an invention for isolating and removing malicious code from electronic messages, is analyzed using the two‑part test from Alice and Mayo Collaborative Services. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). The other examples released by the USPTO as eligible claims include the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., et al., 773 F.3d 1245 (Fed. Cir. 2014) (dynamically reformatting web pages as users visit new web sites), and modified versions of the claims in Research Corporation Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859 (Fed. Cir. 2010) (digital image halftoning), and SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010) (GPS technology).
The guidance also includes example claims deemed ineligible under § 101.
The hypothetical claim and the claims from DDR Holdings, according to the PTO, are not directed to abstract ideas. While the PTO concludes that the claims from Research Corporation and SiRF Technology are directed to abstract ideas, the PTO also explains that these claims are drawn to significantly more than the abstract idea. The USPTO is also providing training to examiners related to these new examples. These examples and the associated analysis might be helpful during interviews with examiners who persist with § 101 rejections.