Until further guidance is provided by the Federal Circuit (or Congress), it is not clear what is required for a claim to pass the threshold patent eligibility inquiry of 35 USC 101 (and not be construed as an “abstract idea”) outside of satisfying the “Machine-or-Transformation” test and the Supreme Court’s Trilogy of cases (Benson, Flook, and Diehr) related to patent subject matter eligibility. However, even with such uncertainty, there are a number of items that remain unchanged even after the Supreme Court’s decision in Bilski v. Kappos from a patent prosecution perspective.
Patent Prosecution | USPTO has Initial Burden in furthering a Prima Facie Case of Unpatentability
One of the initial items that should be considered when analyzing the propriety of a rejection(s) included in an Office Action (irrelevant of whether its a 35 USC 101/35 USC 102/35 USC 103/35 USC 112 rejection) should be: Has the Examiner Satisfied their Initial Burden?.
The Examiner bears the initial burden in providing factual support for a rejection included within the Office Action. For example, regarding Obviousness rejections (35 USC 103), MPEP 2142 – Legal Concept of Prima Facie Obviousness states: “The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.”
For subject matter rejections under 35 USC 101, MPEP 2106 indicates that it is the Examiner who bears the initial burden in furthering a prima facie showing under 35 USC 101 (see MPEP 2106 – Patent Subject Matter Eligibility). Accordingly, if a practitioner receives a 35 USC 101 rejection which only states that the claim is not patent eligible because it does not satisfy the “machine-or-transformation” test without anything further, such a rejection would not appear to satisfy the requirements included in MPEP 2106.
MPEP 2106:
“D. Establish on the Record a Prima Facie Case
USPTO personnel should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. USPTO personnel must weigh the determinations made above to reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter. ‘The examiner bears the initial burden of presenting a prima facie case of unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If the record as a whole suggests that it is more likely than not that the claimed invention would be considered a practical application of an abstract idea, natural phenomenon, or law of nature, then USPTO personnel should not reject the claim.
After USPTO personnel identify and explain in the record the reasons why a claim is for an abstract idea with no practical application, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection. See, e.g., In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995); see generally MPEP § 2107 (Utility Guidelines).”
Patent Subject Matter Eligibility Guidelines | USPTO
Although the Supreme Court held in Bilski v. Kappos that the “Machine-or-Transformation” (M-or-T) test is not the sole test for determining patent subject matter eligibility, it still spoke positively of the test
It should be stressed that a claim may be patent-eligible (as long as its not an “abstract idea”) even if it does not satisfy the M-or-T test as the Supreme Court held that: “the Federal Circuit incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test.” Until additional guidance is developed (CAFC/USPTO/Congress) and in the interest of time/cost, a patent practitioner may consider continuing to implement the existing guidance that has been provided by the USPTO regarding patent subject matter eligibility.
To help accomplish the foregoing task, the practitioner may want to revisit the interim instructions that were released last summer (August 2009) by the USPTO: “Interim Patent Subject Matter Eligibility Examination Instructions” which provide guidance for evaluating subject matter eligibility under 35 USC 101.
The following USPTO document includes: 1) the aforementioned instructions; 2) multiple subject matter eligibility test flowcharts for evaluating product and process claims; and 3) a USPTO training presentation entitled “Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 USC 101″ which includes a detailed analysis of a number of exemplary product and process claims. The following discussion reviews key items from the aforementioned USPTO document.
Machine, Manufacture, and Composition of Matter (Product) Claims | Patent Subject Matter Eligibility Guidelines | USPTO
If a claim is directed to one of the three product categories, it is patent eligible. However, if a judicial exception is recited in the claim, it must be determined if the “judicially excepted subject matter has been practically applied in the product.”
Product Claim | Primary Inquiries:
#1) Is the claim directed to a product (machine, manufacture (computer-readable medium or “beauregard” claim), or composition of matter)?
#2) Is a judicial exception recited in the claim? (e.g., mathematical algorithm) (if answer is “NO” than claim is patent eligible under 35 USC 101, else must additionally satisfy inquiries #3 and #4 for claim to be patent eligible).
#3) Is the claim as a whole directed to a practical application of the judicially excepted material?
This prong is satisfied when: “a claim that includes judicially excepted subject matter and whose broadest reasonable interpretation is directed to a man-made tangible embodiment (i.e., structure) with a real world use is limited to a practical application (the subject matter has been practically applied….” (page 4) Additionally, a practical application: “relates to how a judicially recognized exception is applied in a real world product or a process, and not merely the result achieved by the invention”; and “is often self-evident based on the claim limitations that define the tangible embodiment.” (page 4)
The aforementioned requirements are satisfied in one of exemplary product claim examples: (“a machine for evaluating search results, comprising: a microprocessor coupled to a memory, wherein the microprocessor is programmed to evaluate search results by: sorting the results … ranking the results … comparing the ranked results…”) as the claim recites: 1) a tangible embodiment (microprocessor); and a real-world use (microprocessor evaluates search results). (page 20)
In another one of the exemplary product claim examples, a Beauregard claim (or computer-readable medium claim) additionally satisfies this inquiry due to its recitation of a computer-readable medium (tangible embodiment) and real-world use (sorting search results): “a non-transitory computer-readable storage medium with an executable program stored thereon, wherein the program instructs a microprocessor to perform the following steps…”) (page 21) Additionally, it should be noted that the reasoning for the aforementioned “non-transitory” language is provided below in the section entitled “Subject Matter Eligibility of Computer Readable Media.”
#4) Is the claim directed to substantially all practical applications of the exception?
If an algorithm can be used with “different programming steps”, (page 20) than the claim is likely not directed to substantially all practical applications of the exception. Conversely, the claim is likely directed to substantially all practical applications of the exception if use of the mathematical subject matter is foreclosed beyond the claim (preemption).
In addition to the above items, the following flowchart is included in the USPTO document.
Process Claims | Patent Subject Matter Eligibility Guidelines | USPTO
Process Claim | Primary Inquiries:
#1) Is the “Machine-or-Transformation” (M-or-T) test satisfied (“tied to a particular machine or apparatus (machine-implemented)” or “particularly transform a particular article to a different state or thing.” (page 6) An”article” is defined as “a physical object or substance” or “electronic data that represents a physical object or substance … data should be more than an abstract value….” (page 6) Further, for computer-implemented processes, the “machine” is usually a general purpose computer. However, once this general purpose computer is programmed to perform process steps, it in effect may become a “special purpose computer” (or “particular”). (page 7)
#2) If a “particular machine” is present, does use of it impose a meaningful limit on the claim (more than field of use) OR if a “transformation” is present, does the transformation impose a meaningful limit on the claim?
#3) If a “particular machine” is present, does use of it involve more than insignificant “extra-solution” activity OR if a “transformation” is present, does the transformation involve more than insignificant “extra-solution” activity?
#4) Confirm: a) “real world application” is present; and b)”substantially all practical uses of a judicial exception” are not pre-empted.
In addition to the above inquiries which are described in the guidelines, two different exemplary process claims are included which are examined below.
Process Claim | Tied to a Particular Machine
It should be noted that the first exemplary process claim (“Claim Tied to a Particular Machine” – page 26) included in the USPTO document does not recite within the preamble a “machine;” however, one of the steps includes a machine: “comparing, using a microprocessor, the ranked results to….” This claim is patent eligible as said step is considered “central to the method invented by the applicant”(imposes a meaningful limit) and not “a mere field-of-use or insignificant extra-solution activity” (satisfying inquiries #2 & #3 noted above).
Process Claim | Extra-Solution Activity
Contrastingly, in the second exemplary process claim (“Extra-Solution Activity” – page 27), even though the claim inherently recites a “particular machine” (e.g., “the step of obtaining the search results inherently requires a programmed microprocessor to download data from a database…”), the claim is not patent eligible as the aforementioned step is “not central to the purpose of the method … and is insignificant extra-solution activity.”).
In addition to the above items, the following flowchart is included in the USPTO document.
“Transformation” Prong of M-or-T Test | Patent Subject Matter Eligibility Guidelines | USPTO
On pages 5 and 6 of the guidelines, “transformation” is defined as an article that has “changed to a different state or thing” (please note that an”article” is defined as “a physical object or substance” or “electronic data that represents a physical object or substance … data should be more than an abstract value….” (page 6)). A change of location, purely mental processes such as thoughts or human based actions, and mathematical manipulations of data do not constitute a transformation.
Contrastingly, the transformation prong of the M-or-T test is satisfied with regard to electronic data when “the nature of the data has been changed such that it has a different function or is suitable for a different use.” (page 6)
Subject Matter Eligibility of Computer Readable Media | USPTO
Earlier this year, the USPTO released a document entitled “Subject Matter Eligibility of Computer Readable Media” (signed January, 2010 by Director Kappos) in which guidance is provided regarding “computer readable medium” / “machine readable medium” claims (or Beauregard claims).
The document states, “the broadest reasonable interpretation of a claim drawn to a computer readable medium … typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of a computer readable media, particularly when the specification is silent. See MPEP 2111.01.” The document further states that if a claim is drawn to a computer readable medium which covers both transitory and non-transitory embodiments, the claim may be amended (to cover only statutory embodiments) with the recitation “non-transitory.” Further, the document states that such an amendment will normally not trigger a new matter issue even if the specification is silent unless the specification “does not support a non-transitory embodiment because a signal per se is the only viable embodiment….”
Concluding Thoughts | USPTO Practice
The following “thoughts” are a final recap/derived from the USPTO resources described above:
- Initial Burden: The Examiner bears the initial burden in furthering a prima facie showing under 35 USC 101 prior to the burden shifting to the Applicant. This prima facie showing requires the Examiner to “identify and explain in the record the reasons why a claim is for an abstract idea.”
- Product Claims: Simply reciting a “machine” or other product in the preamble without further inclusion of a tangible recitation (e.g., a “microprocessor”) in the main body of the claim will likely not satisfy the aforementioned USPTO guidelines (see exemplary method claim on page 20 of the Patent Subject Matter Guidelines document). Further, it should be noted that a “machine” is described in said document as “a concrete thing, consisting of parts.” Simply stated: an apparatus claim recites structural components (physical), while a method claim recites a series of steps or acts. Additionally, inquiries #3 and #4 (particular practical application/no preemption) described above for “Product” claims must additionally be satisfied for the claim to be patent eligible under 35 USC 101.
- Beauregard Claims: Ensure that a “computer readable medium” (or Beauregard) claim recites the verbiage “non-transitory” (e.g. “a non-transitory computer-readable storage medium….”) to avoid having the claim construed in “the broadest reasonable interpretation” as a transitory embodiment (signal) which is non-statutory. Further, ensure that the Specification does not indicate that the storage medium or other “tangible” product (machine) may be software-based, etc. as such a description may result in the claim being construed as directed to a non-statutory category. Page 3 of said document includes a listing of “non-limiting examples of claims that are not directed to one of the statutory categories: “1) transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se); 2) a naturally occurring organism; 3) a human per se; 4) a legal contractual agreement between two parties; 5) a game defined as a set of rules; 6) a computer program per se; 7) a company.”
- Process Claims: Even though a “particular machine” is recited within a process claim, unless the machine imposes a meaningful limit (and is central to the purpose of the process claim), the involvement of the particular machine may be considered extra-solution activity. Additionally, inquiry #4 (real-world application/no preemption) described above for “Process” claims must additionally be satisfied for the claim to be patent eligible under 35 USC 101.