The Specification is Not the Only Source of Evidence of Improvement Under 35 U.S.C. § 101
There are different paths to overcoming an “Alice” (Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014)) related 35 U.S.C. § 101 rejection of software-related patent claims at the United States Patent and Trademark Office (USPTO). One way to overcome such a rejection is to argue that there is an improvement to the operation of the computer itself or “another” technology (separate from the operation of the computer itself). See Id., at 2359; USPTO Examples: Abstract Ideas, January, 2015, p. 7, Example 3; USPTO November 2, 2016 “Recent Subject Matter Eligibility Decisions” memorandum, November 2, 2016 (“November, 2016 Memorandum”), p. 2.
However, in many cases, USPTO examiners incorrectly require that evidence of improvement be contained within the specification of the application as filed, and ignore – officially and on the record –evidence or argument regarding an improvement not supported by an explicit statement in the specification. This refusal extends to evidence presented in a 37 CFR §1.132 declaration. This is contrary to the law, which permits evidence in varying forms to be submitted and considered.
Patent applications drafted after it became clear that the Alice “improvement” standard had been moved to the fore by the USPTO will often include an explicit “improvement” section, but applicants must work with the specification they have, which may not have such statements.
One source of examiners’ error may be the USPTO’s May 19, 2016 Memorandum entitled “Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC)” (“May, 2016 Memorandum”) which discussed the Federal Circuit’s reliance on the patent specification in Enfish when assessing whether the claimed invention represented an improvement to existing computer technology. May, 2016 Memorandum, p. 2. Another source may be the November, 2016 Memorandum, which presented a similar analysis of McRO. November, 2016 Memorandum at 2. Neither of these memoranda required that evidence of improvement come from the specification or precluded the use of other evidence. In fact, the November, 2016 Memorandum stated that an indication of an improvement may come from the specification or “a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention”. November, 2016 Memorandum at 2-3.
Another source of confusion may be Section 2106.05(a) of the Manual of Patent Examining Procedure (MPEP), which states:
If it is asserted that the invention improves upon [existing technology], a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. MPEP § 2106.05(a) (emphasis added).
MPEP § 2106.05(a) states that (i) the specification should allow someone with ordinary skill to recognize an improvement (not that the specification must explicitly state the improvement itself), and (ii) an explicit statement regarding improvement in the specification is one potential source of evidence of improvement. This first notion may allow applicants to provide attorney argument, backed up by the specification, that one skilled in the art, viewing the claims at issue, would understand that an improvement exists.
The mistaken notion that the only source of evidence for an improvement is the specification is in opposition to the general practice and guidance regarding evidence at the USPTO, for example MPEP § 716, which provides that a “132 Declaration” may be used to provide evidence. See also 37 CFR § 1.132.
Two recent Federal Court cases confirm that the specification is not the exclusive source of evidence of improvement. In Verint Sys. v. Red Box Recorders Ltd., the court stated that an expert declaration confirmed improvements to technology that had been discussed in the specification. Verint Sys. v. Red Box Recorders Ltd., 226 F. Supp. 3d 190, 199 (S.D.N.Y. 2016) (emphasis added). Similarly, in Huawei Techs., Co. v. Samsung Elecs. Co., the court specifically acknowledged applicant’s presentation of evidence of improvement outside of the specification. Huawei Techs., Co. v. Samsung Elecs. Co., 2018 U.S.Dist. LEXIS 172101, *113-14 (N.D. Ca. 2018).
While in the near term it is likely that USPTO examiners will insist that evidence of an improvement must be explicitly stated in the specification, applicants presenting other evidence should argue if challenged by an examiner that other sources may be used for such evidence. Further, applicants should argue that attorney argument based on the teachings of the specification or the plain results of the claims (in light of what one or ordinary skill in the art would understand) may provide an adequate showing of an improvement to computer technology, or to “another” technology. At a minimum, such arguments and evidence will provide a record for a future appeal.