Methods of Organizing Human Activities

By Robert Stoll
March 10, 2015

uspto_main-campus-1The United States Patent and Trademark Office (USPTO) has undertaken the difficult task of implementing several recent Supreme Court cases, which fundamentally changed what is eligible for patent protection. The USPTO initially issued new subject matter guidelines on March 4, 2014 after the Supreme Court handed down the Mayo and Myriad decisions. These earlier guidelines were met by an angry firestorm of opposition by the user community, who maintained the draft went further than the narrow holdings of the decisions being implemented and would irreparably harm U.S. companies and our economy.

In response to the uproar, the USPTO issued revised and much improved “interim” guidance that took into account an additional Supreme Court decision, CLS Bank v. Alice, relating to patent subject matter eligibility of business methods. The new guidance eliminated the unwieldy 12 factor test and made a number of other improvements in response to criticisms from the patent community.

The USPTO is to be applauded for listening to the user community and modifying the instructions. The Office has wisely referred to these new guidelines as “interim,” which seems to indicate they are planning on additional amendments and revisions to the guidelines.

That’s a good thing, because there seem to be a lot of inventors (and patent examiners) that are experiencing real difficulties in understanding how to apply the guidelines. Many of these issues can be traced back to the same root problem – the lack of clarity in defining what constitutes an “abstract idea.”

For example, the guidelines refer to “certain methods of organizing human activity” as a subcategory of abstract ideas. This phrase is derived from Bilski, which commented that “hedging is a longstanding commercial practice, …it is a method of organizing human activity not a ‘ truth’ about the natural world.” However, this passage in Bilski was merely responding to an argument made in the briefs, not announcing some new category of ineligible subject matter. Even if this language was based in case law, there is no articulation of what ‘certain methods’ are acceptable, and which are not.

Fundamentally, the problem is that there is no definition of (and arguably no case law basis for) the exclusion of “certain methods of organizing human activity.” No cases prohibit patenting a method of organizing human activity. Yet USPTO examiners are using the language in the guidance to deny patents on all types of claims related to the organization of human activity.

The diverse variety of claims that are receiving rejections based on the “certain methods of organizing human activity” illustrate the absence of any coherent understanding or definition of this phrase among the examining corps. In counseling clients on prosecution matters, I have encountered “organizing human activity” rejections for, inter alia, claims directed to a method for employing user-defined physical gestures to indicate that a data stream received by a device comprises speech input should be processed by its speech recognition engine. This claim doesn’t have any apparent relation to “organizing human activity,” but rather involves using user input to control a computing device. Nevertheless, the claim was rejected as directed to ‘a method of organizing human activities.’

Sadly, this is not an isolated case. I’ve seen similar rejections in a diverse (and utterly random) number of art areas and technologies ranging from predictive computer algorithms, to voice recognition technology, to methods for user-customization of advertising received on a device. While some of the rejected claims were arguably directed to an abstract idea, only a small minority had any apparent connection to “organizing human activity” as that phrase has been used in the case law.

Typically, this term has been used to describe non-technical methods involving economic and social activities involving human actors – e.g., computerized match-making on a dating site, strategies for hedging in commodities markets, or automated processes for reducing risk in executing financial transactions. Without clear guidance on the terms meaning, it has become untethered from its original meaning. This has resulted in some examiners interpreting it as a catch-all that enables rejection of any claim involving interaction with a human user, potentially encompassing everything from surgical techniques to methods of medical treatment to every-day activities like driving, using telecommunication devices, and food preparation.

Obviously, this was not the intent of the courts, as illustrated by a review of their decisions. Their rulings have carefully carved out a few narrow areas of abstract ideas that are critical to further innovation and that if made patent eligible, would otherwise pre-empt the building blocks of human ingenuity.

The Office’s use of “certain” correctly signals to examiners that not all such methods are ineligible. But the guidelines do not take the necessary step of telling examiners how to determine which methods are in and which ones are out. Examiners try to quickly get to the right decision in the limited time they have to fully review a patent application. These government officials focus on every word provided by upper management and look for any tool or rule to facilitate the examination process to handle the case as expeditiously as they can. With the language provided in the guidelines, examiners are quickly rejecting cases that meet the requirements of the Court because they wrongly think the Court banned patents in this area.

Upper management should again amend the instructions, staying within the narrow confines of the Court decisions, so that proper claims are neither delayed issuance or ultimately denied. Those amendments must address this confusion over “certain methods of organizing human activity.”

Given its questionable basis in the case law, the USPTO should delete this language from the guidance materials. It was never intended to be a threshold test by the Court. If the Office chooses to retain it, however, it is necessary to provide some sort of additional guidance to define what USPTO means by “certain methods of organizing human activity.” Currently, neither applicants nor examiners have any basis for understanding what these words are intended to mean.

I am confident that the management of the USPTO will be updating the guidance as new cases emerge from the courts and new problems are detected. I am well aware of the difficulties presented in changing the way over 8000 examiners handle these changes. Drawing upon my experience at the Office, my recommendation is for the USPTO to continue to make changes in practice very carefully and with frequent and repeated training opportunities to ensure the spirit and letter of the law are aligned.

The Author

Robert Stoll

Robert Stoll is a partner with Drinker Biddle and is co-chair of the Intellectual Property Practice Group.

Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. He was instrumental in the passage of landmark patent legislation, the America Invents Act, and lauded for his efforts to reduce patent pendency and improve patent quality. Having risen from the rank of examiner to lead the 8,000-employee organization, he has spent his career improving the intellectual property system.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments.

  1. American Cowboy March 10, 2015 9:54 am

    It would seem that examiners are giving the phrase “certain methods of organizing human activity” its broadest reasonable construction (like they do to claim recitations). If they do that, of course, the result is that the word “certain” does not have any limiting significance, because they interpret it as meaning the opposite of “uncertain.” Uncertain claims are rejected under section 112. So assuming that the claim does not fail under section 112, it must fail under section 101.

    Yes, that is nonsense, but it is the inevitable bureaucratic response to gobbledygook coming from the Supreme Court.

  2. Joachim Martillo March 10, 2015 1:06 pm

    American Cowboy shows why the abandonment of Latin by the legal profession has been such a disaster.

    The guidance means: “quidam modi ad humana facta ordinanda” and not “certi modi ad humana facta ordinanda”.

    While English provides a good level of precision, Latin with its clear declensions and conjugations as well as generally narrower ranges of meanings for words is far better for stating principles and laws.

  3. concerned citizen March 10, 2015 1:20 pm

    This should be formally submitted to the USPTO as a comment on their Interim Guidelines.

  4. Night Writer March 10, 2015 3:23 pm

    I think Gingsburg also referenced this organizing human behavior in a concurrence for a later case. Interestingly, Kagen did not sign the concurrence so that 4 became 3 for the Stevens view of 101.

    I also think that this probably illustrates that the SCOTUS is not qualified to be making decisions in patent law. Anyone should be able to see that organizing human behavior is exactly where innovation is going right now. That computers are more and more becoming involved in the work process. Moreover, anyone involved in patent law should know that there is no such thing as saying patents weren’t meant for something that was not yet invented. The way to analyze innovation is with structure. If there is structure being created for technical machines then it is highly likely that is an area where patents would encourage innovation.

    Gingsburg is very old poorly educated person that needs to step down. Her opinions on patent law illustrate how limited she is. To my mind, she shames the entire US by her presence on the SCOTUS.

  5. random guy March 10, 2015 5:32 pm

    I have predicted this mess almost 4 years ago when my application was rejected by incompetent and confused examiners.

  6. Benny March 11, 2015 7:59 am

    Just looking at the title of US20090222522 you would think it was an exercise in obtaining rejections.
    Joachim at 2, if you think I am going to read patent claims in Latin, sit down, drink a glass of cold water and think again.

  7. Anon March 11, 2015 9:16 am

    Benny,

    I would think that you and Joachim would get along famously, as you both have a tendency to view patent law through your own particular set of eyeglasses.

    If I did not care to protect my anonymity, I would most definitely want to book an evening at a quiet pub, and sit down over several mugs and have you each explore those eyeglass biases. At the end of the evening, if each of you could realize how your individual perspectives actually limit your respective abilities to engage US patent law, I think that your individual insights, adjusted for that bias would be welcome discussion points and quite valuable.

  8. AAA JJ March 11, 2015 10:41 am

    “Given its questionable basis in the case law, the USPTO should delete this language from the guidance materials.”

    If the PTO deleted everything with a questionable basis in the case law, the MPEP would be about 12 pages long.

  9. American Cowboy March 11, 2015 3:33 pm

    AAA JJ, bravo. Same is true of the TMEP.

  10. Easwaran March 12, 2015 12:19 pm

    “This phrase is derived from Bilski, which commented that “hedging is a longstanding commercial practice, …it is a method of organizing human activity not a ‘ truth’ about the natural world.” However, this passage in Bilski was merely responding to an argument made in the briefs, not announcing some new category of ineligible subject matter.”

    A small mistake: this passage is actually referencing the Alice opinion, not the Bilski opinion.

    Interestingly, the phrase “method of organizing human activities” does, in fact, come from Bilski (not Alice), but that original use actually supports the same point anyway. The phrase is used in the Dyk concurring opinion in the In re Bilski decision (a use which is disparaged in the Newman dissent in that case for the vagueness of the phrase), and also referenced in the Stevens concurrence in Bilski v. Kappos (which endorses this Dyk opinion, but which does not carry the force of law).

    One thing about the references to methods of organizing human activities in Bilski is that Dyk wasn’t talking about just any claims drawn to organizing human activities. Rather, he was talking about methods that don’t include any machinery at all (remember, this was in the context of the M-or-T test):

    “the need to accommodate technological change in no way suggests that the judiciary is charged with rewriting the statute to include methods for organizing human activity that do not involve manufactures, machines, or compositions of matter.”

    So really, if you trace back to the earlier use of the term by the Federal Circuit and then the Supreme Court, the category “methods of organizing human activities” is arguably a much smaller category than one might intuitively think (i.e., it includes only those methods that “do not involve manufactures, machines, or compositions of matter.”). The original poster’s ultimate point is accurate, regardless.

    In any event, one has to wonder why the PTO would include this phrase in its guidance in the first place, when it is so plainly irrelevant to the Alice 101 analysis.

  11. Anon March 12, 2015 12:55 pm

    As you point out Easwaran, the sections that the phrase is pulled from is not controlling law – and should not be treated as such at all.

    The notion that methods are a sub-tier category of the hard goods category appears to be an errant holdover from a time and place outside of the US law written by Congress.

  12. Night Writer March 16, 2015 8:00 am

    After thinking about this a while and reading the other comments what occurred to me is that what is so strange about this alleged exclusion is that it is based on a target domain. It is really an argument of “useful” saying that we aren’t going to include technology that organizes human behavior as useful.

    I suspect this is going to the fear of Gingburg and her lowly likes of computers controlling human behavior. Read in this context, this is really an extraordinary statement by Gingburg of judicial activism.

  13. Ken Fagin March 24, 2015 8:45 pm

    I have responded successfully to a mooha (sounds almost like “bullsh*t,” doesn’t it?) rejection in connection with gaming machines with the following:

    As alluded to above, the Examiner refers several times to coordination of physical human activity. In particular, he asserts that
    [t]he abstractness is clear when considering the coordination of general physical human activities, such as a process of conducting a drawing, such as through physical human activity, to determine if certain game elements (i.e. wild symbols) are to be presented in two columns of an array, and conducting presentation effects, such as through physical activity. The abstract idea appears to be fully capable of implementation via coordination of physical human activity, such as through mental process of determinations and presentation via writing on paper in one or more manners.

    Such reference to the phrase “coordination of physical human activity” appears to be a misquote (and misapplication) of the phrase “organizing human activities” that the Office has come to rely on for virtually any concept it wants to characterize as abstract, and that concept simply does not apply – at least legitimately – to the claims under consideration.

    In particular, the phrase “organizing human activity” appears to have had its genesis in Judge Dyk’s opinion in the Court of Appeals for the Federal Circuit’s en banc rehearing of the Bilski matter. As noted above, the method claims in that case (i.e., not apparatus claims, as here ) entailed monitoring risk positions and implementing market transactions between a commodity provider and market participants. As such, the claims truly did pertain to conducting affairs between human beings, and it was in the context of considering whether those claims were directed to patent-eligible subject matter that Judge Dyk wrote, referring to the old English Statute of Monopolies (1793), that “[t]he organization of human activity was not within its bounds. Rather, the patents registered in England under the Statute of Monopolies before 1793 were limited to articles of manufacture, machines for manufacturing, compositions of matter, and related processes.” (Bilski, en banc slip opinion, Dyk concurrence at 9.)
    Then, after citing to a mid-1800s compilation of patents that were granted under the English Statute, Judge Dyk wrote that “[n]othing in Woodcroft’s list suggests that any of these hundreds of patents was on a method for organizing human activity, save for one aberrational patent discussed below[,]” id, and he continued that “[t]here is no suggestion in any of this early consideration of process patents that processes for organizing human activity were or ever had been patentable. Rather, the uniform assumption was that the only processes that were patentable were processes for using or creating manufactures, machines, and compositions of matter[,]” id. at 12. Finally, equating the scope of subject matter embraced by an English statute from 1793 with the scope of subject matter embraced by a U.S. statute from 1952, and ignoring the fact that the technologies that make possible claims such as those under consideration in Bilski, Alice, and here did not even exist at the time § 101 was enacted in 1952, Judge Dyk posited without support that “[i]n short, the need to accommodate technological change in no way suggests that the judiciary is charged with rewriting the statute to include methods for organizing human activity that do not involve manufactures, machines, or compositions of matter.”

    Subsequently, referring to Judge Dyk’s concurring opinion, Justice Stevens wrote in Bilski – but only in a concurring opinion – that “[t]here was some debate throughout the relevant time period about what processes could be patented[, but] it does not appear that anyone seriously believed that one could patent ‘a method for organizing human activity.’” And then in Alice, where the claims were directed to a computerized system to ensure that both parties to a contract perform their respective obligations, the Supreme Court wrote (emphasis added) that

    Bilski belies petitioner’s assertion [that abstract ideas are confined to preexisting, fundamental truths that exist in principle apart from any human action]. The concept of risk hedging we identified as an abstract idea in [Bilski] cannot be described as a “preexisting, fundamental truth.” The patent in Bilski simply involved a “series of steps instructing how to hedge risk.” 561 U. S., at 599. Although hedging is a longstanding commercial practice, id., at 599, it is a method of organizing human activity, not a “truth” about the natural world “ ‘that has always existed,’” Brief for Petitioner 22 (quoting Flook, supra, at 593, n.15). One of the claims in Bilski reduced hedging to a mathematical formula, but the Court did not assign any special significance to that fact, much less the sort of talismanic significance petitioner claims. Instead, the Court grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that risk hedging was a “‘fundamental economic practice.’” 561 U.S., at 611.

    With that, the lower courts and the PTO were handed their multi-purpose “tool” for ruling that claims are directed to an abstract idea: just assert that the claims are directed to a method of organizing human activity, and the non-patent-eligible nature of the claims becomes essentially a foregone conclusion. And now far-removed from the claim-specific facts of the case from which the phrase “method of organizing human activity” sprang, concepts as mundane or banal as saving numbers for various Bingo cards in a computer (see Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014), discussed in the PTO’s January 2015 patent-eligibility Examples) or spinning symbols on reels and awarding prizes depending on their resulting configuration are being given far more “grandeur,” “universality,” or importance to the “grand scheme” of human affairs than they truly deserve. Simply put, the PTO – including the Examiner in this application – has taken language that was used in connection with one type of claimed invention and is now, unfortunately, using that language in connection with many other types of claims that bear little if any resemblance to the claims in connection with which the language was originally used. Thus, to say that the protocol according to which a gaming machine operates amounts to a method of organizing human activities, analogous to the methodologies that were claimed in Bilski and Alice, greatly strains credulity.

    d. Organizing Human Activity Is Not Valid Underpinning of Abstractness
    As explained above, the phrase “organizing human activity” appears to have had its genesis in Judge Dyk’s opinion in the Court of Appeals for the Federal Circuit’s en banc rehearing of the Bilski matter. Significantly, however, that opinion was just a concurring opinion. As such, it was obiter dictum and entitled to no weight whatsoever. Then, citing to Judge Dyk’s concurring opinion, Justice Stevens also used that phrase in the Bilski matter. As was the case with Judge Dyk’s opinion, however, Justice Stevens’ opinion was also just a concurring opinion. As such, Justice Stevens’ opinion was also obiter dictum and entitled to no weight whatsoever.

    Subsequently, in Alice, “methods of organizing human activity” was referenced only twice in the Supreme Court’s opinion. First, as noted above, the majority opinion states that

    Bilski belies petitioner’s assertion [that abstract ideas are confined to preexisting, fundamental truths that exist in principle apart from any human action]. The concept of risk hedging we identified as an abstract idea in [Bilski] cannot be described as a “preexisting, fundamental truth.” The patent in Bilski simply involved a “series of steps instructing how to hedge risk.” 561 U. S., at 599. Although hedging is a longstanding commercial practice, id., at 599, it is a method of organizing human activity, not a “truth” about the natural world “ ‘that has always existed,’” Brief for Petitioner 22 (quoting Flook, supra, at 593, n.15). One of the claims in Bilski reduced hedging to a mathematical formula, but the Court did not assign any special significance to that fact, much less the sort of talismanic significance petitioner claims. Instead, the Court grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that risk hedging was a “‘fundamental economic practice.’” 561 U.S., at 611.

    That, Applicants submit, is hardly tantamount to a holding that any and all methods of organizing human activity should be considered to be abstract. Rather, as the Alice Court specifically explained, the decision in Bilski was based on the fact that risk-hedging – the practice at issue there – was a fundamental economic practice.

    And second, the only other place where the Supreme Court refers to “methods of organizing human activity” in the Alice decision is in Justice Sotomayor’s concurring opinion, where she cites to Justice Stevens’ concurring opinion in Bilski and Judge Dyk’s concurring opinion in Bilski to support her “view that any ‘claim that merely describes a method of doing business does not qualify as a ‘process’ under §101.’” Once again, however, this was merely a concurring opinion and, as such, it was obiter dictum and entitled to no weight at all.
    Furthermore, it is instructive to observe that Judge Dyk asserted that “[t]here is no suggestion in any of this early consideration of process patents that processes for organizing human activity were or ever had been patentable” as a predicate for his subsequent assertions (emphases added) that “the uniform assumption was that the only processes that were patentable were processes for using or creating manufactures, machines, and compositions of matter” and that “the need to accommodate technological change in no way suggests that the judiciary is charged with rewriting the statute to include methods for organizing human activity that do not involve manufactures, machines, or compositions of matter.” In so invoking “manufactures, machines, and compositions of matter” as the touchstone for patent-eligible processes, Judge Dyk essentially equated the test for patent eligibility to the “machine-or-transformation” test.

    Ultimately, however, the Supreme Court explicitly held in the majority opinion in Bilski (i.e., the one that “counts”) that “machine-of-transformation” is not the exclusive determinant of patent eligibility for a claimed method. That holding, in turn, vitiated Judge Dyk’s reasoning in his Bilski concurring opinion and, with it, the eligibility-precluding effect of something being characterized as a “method of organizing human activity.”

    Thus, in citing “methods of organizing human activity” to characterize claims as being directed to abstract subject matter, the PTO has been invoking a phrase that is as tainted as the test for eligibility the phrase was penned to support in the first place. In other words, the PTO has erroneously ascribed far more import (in terms of patent-eligibility) to the “organizing human activity” concept than proper analysis of the underlying caselaw shows to be warranted.
    In short, proper analysis of the organizing-human-activity “doctrine” shows it to be improper. Accordingly, it is error for the PTO to apply this rationale – here and elsewhere – to support an assertion that a given set of claims are abstract.

  14. Anon March 28, 2015 10:23 am

    Ken,

    While perhaps on point, the abundance of words loses the sharpness that the point you want to reach needs.

    To put it more directly:

    What Stevens attempted to do in Bilski, and what was reflected by Sotomayor in Alice is simply not the law, and certainly does not have any legal weight.

  15. Ken Fagin March 29, 2015 7:01 pm

    noted, but examiner will not take such an assertion at face value. that said, i wasn’t writing with examiner in mind; I was writing with PTAB and, more likely, Fed. Cir. in mind.

    On the subject, colleague of mine had interview with examiner the other day. Examiner told colleague that even if we convince him, and even if he completely agrees and believes the claims are patentable, he will still reject because the “policy makers” on high are instructing them to reject all claims, because they can’t have inconsistency between various examiners. But that smacks of foregone conclusion — completely predetermined without any regard to what claims even say — and I can’t think of anything that is more wrong/unfair/prejudicial than that.