Recently, the United States Patent and Trademark Office (“USPTO”) provided eight scenarios, four of which demonstrate patent eligible subject matter (Step 2A: NO or Step 2A: YES + Step 2B: YES, see previous article: Summary of Preliminary Examination Instructions in view of Alice Corp) and four of which demonstrate patent ineligible subject matter (Step 2A: YES + Step 2B: NO).
First, the USPTO wanted to inform applicants and examiners that it is possible to draft a claim that covered a software innovation and was NOT directed to an abstract idea (software innovation + Step 2A: NO). For example, in Hypothetical 1, the UPSTO identified software that isolates and removes malicious code from electronic messages wherein the claim is directed to “performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology” was not directed to an abstract idea.
Hypothetical 2, based on DDR Holdings, LLC v. Hotels.com, L.P., Appeal No. 2013-1505 (Fed. Cir. Dec. 5, 2014), was considered to NOT directed to a judicial exception was one that addressed “a business challenge (retaining website visitors) that is particular to the Internet” such that the solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
Hypothetical 3, based on Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), was considered directed to an abstract idea but amounted to significantly more than the abstract idea addresses a mathematical operation of generating a blue noise mask, which allows a computer to use less memory than require for prior masks. This example shows that software that can improve the functioning of a computer itself is enough to be considered “significantly more” for a YES for Step 2B.
Hypothetical 4, based on SiRF Technology, Inc. v. International Trade Commission, 601 F.3d. 1319 (Fed. Cir. 2010), was considered directed to an abstract idea but also amounted to significantly more than an abstract idea because of the additional features and “meaningful limitations placed upon the application of the claimed mathematical operations.” The claim was limited to a mobile device comprising a GPS receiver, microprocessors, wireless communication transceiver and a display; the combination of the elements with the mathematical operations “are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver.” Thus, when viewed in combination, the UPSTO deemed that it amounted to significantly more than the judicial exception.
The next set of four hypotheticals exemplified claims that were not patent eligible. Hypothetical 5, based on Digitech v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), was considered directed to an abstract idea of “gathering and combining data by reciting steps of organizing information through mathematical relationships” involved in digital image processing devices for capturing both spatial and color properties. However, the claims failed to amount to significantly more because it did not include any additional elements beyond the idea.
Hypothetical 6, based on Planet Bingo, LLC v. VKGS LLC, _ Fed. Appx._ (Fed. Cir. 2014) (nonprecedential), considered directed to a series of steps for managing a game of Bingo, which could be performed mentally or in a computer and thus considered a subset of “organizing human activity.” Because the claims’ additional limitations were only a computer with a central processing unit (CPU), memory, a printer, an input and output terminal, and a program, the generic computer components were not enough to be significantly more than the abstract idea of the series of steps.
Hypothetical 7, based on buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 112 USPQ2d 1093 (Fed. Cir. 2014), was considered directed to methods of creating a contractual relationship and offering performance guaranty, which is a fundamental economic practices founded by courts to be an abstract idea. The claim limitation in addition to the abstract idea only included a computer application running on a computer and the computer network. Thus, such generic recitations of a computer and a computer network perform their basic function did not amount to being significantly more than the abstract idea.
Hypothetical 8, based on Ultramercial, LLC v. Hulu, LLC and WildTangent, 772 F.3d 709, 112 USPQ2d 1750 (Fed. Cir. 2014), was considered directed to a series of steps for distributing media and advertisements over the Internet, which is similar to the concepts involving human activity relating to commercial practices. Because the claims’ additional limitations only represented insignificant pre-solution activities and thus the claims simply instruct a practitioner to implement a “conventional activity specified at a high level of generality in a particular technological environment” the claims did not add significant more to the abstract idea of using advertising as an exchange or currency.
These examples based primarily on past case law should be helpful for all parties involved in patent prosecution, including the prosecuting attorney, the inventors and the examiners. As more patent are being submitted for review under the guidance of Alice Corp. and the instructions by the USPTO, we will have a better idea how broad or narrow these examples will be as guidelines.
