As we await the next Update from the Patent Office on subject matter eligibility, it may be worthwhile to consider further the role of examples given in the past by the PTO. The Patent Office’s July 2015 Update on Subject Matter Eligibility (Section 101) tries to respond to the problem of overbreadth of Alice-type abstract-idea rejections in large part by adding a few examples, including examples of cases that should not be rejected. The Office added certain new examples, apparently believing that many members of the public, and the examining corps, found them useful. Original “abstract idea examples” are here, and added examples are here. Although examples of this sort can be helpful and are appreciated, they are not enough!
In the Internet and computer arts, the existing examples offer limited use. The PTO has released only a few examples in the computer fields still, and in general they express fairly obvious points, such as the point that improvements to the computer itself remain eligible. The few “software” examples do not demonstrate the array of different, possible reasons for passing the Section 101 screen. And the examples give only limited explanations of “why so?” – as several commentators have mentioned.
There are no examples of “business method” patents deemed eligible, at least under my understanding of “business methods.”
As shown in the discussion below, the examples do not address many practical questions that arise in the real world.
Personally, like everyone else, I have faced a strong array of Section 101 rejections in my patent-prosecution practice. Yet I have nearly never found it very helpful to refer to any of the existing specific examples released so far by the Office, even though I know that examples sometimes can help convince skeptical examiners. I know other practitioners have cited them with mixed success. My own experience is that they are typically too different from “my” situation, and when I have tried to use an example, the response mostly involves the examiner reading the implications of the same example differently from the way I read it.
Those commenting on the examples have frequently disagreed with the Office’s conclusions or reasoning, and a number of comments request changes to the examples. Even though the PTO has sought to base the examples on decided cases, that effort has not been enough to quiet the objections. Commentators have variously argued that the PTO should not rely on unpublished cases, or on PTAB decisions that cannot be appealed, or on pre-Alice decisions. Some comments have argued that specific cases were wrongly decided.
For its part, the PTO examples seem to suggest that all of the decisions issued by the courts, including those pre-Alice, are consistent with one another. I doubt anyone knowledgeable in this field believes that!
I believe that part of the problem with relying on examples is that any given example cannot offer a full picture of an actual situation. For example, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (the case that I argued and is the only time an appellate court rejected a Section 101 defense post-Alice), the court relied on a statement of the problem solved that was discussed in the “background of the invention” section. None of the PTO’s examples, of course, contains a background. Nor do the examples describe the closest prior art, which is at least relevant.
Another part of the problem is that examples may – but are not certain to – imply a rule. An examiner who looks at an example can easily distinguish a different patent application from the example, because obviously the claims being examined are not the same as those in the example. Alternatively, an examiner can draw parallels between a pending application and a given example, even parallels that might be unwarranted because of differences as to other circumstances.
For example, using an example that I discussed in a previous guest post on this blog, if an example rejects a claim related to advertising, does that mean that examiners should understand that all claims having anything to do with advertising are abstract automatically? How is an examiner to know how far to take the lesson from an example? How is the examiner to know what the lesson is, in the first place?
Another problem is that post-Alice courts have been issuing far more judgments invalidating claims than approvals. But examples are of little use unless they can guide examiners to decide both rejections and allowances. In the Update, the PTO, to its credit, tried to construct some positive examples approving claims, but it is not easy.
Among the examples having some bearing to the computer field, none deals with Step 2A or business methods. Few of those examples, also, relate to commonly applied-for computer inventions that are in the field of “computer software,” which use computer calculations to determine a result having useful effect.
The positive examples closest to the computer field are as follows: Example 21 is held eligible because of “solving an Internet-centric problem” similar to DDR Holdings. Example 23 (claim 4) is eligible because of “overcom[ing] a problem specifically arising in [GUIs].” Example 25 treats the Diamond v. Diehr case, held eligible because it controls a different piece of equipment. Example 27 is a streamlined analysis for a computer BIOS. None adds significantly to what patent attorneys can argue directly from Diamond or DDR.
Despite the difficulty, the PTO must do more. Inadequate PTO guidance on subject matter eligibility is resulting in over-use of Alice-type abstract-idea rejections and a great deal of uncertainty, especially in the economically critical fields of e-commerce, software, and finance, as I observed in an earlier guest post. This problem is reflected in the rejection statistics and the public response. I have recommended a more structured approach to examiner application of Alice and the use of contrasting examples and better-refined (and in some cases eliminated) “judicial descriptors” and “factors.” But my suggestions do not downplay the use of examples.
Aside from my other suggestions, if the PTO is going to continue to issue examples despite the previous criticisms, there is much it can do to make the examples more useful.
First, the PTO should develop several more examples of eligible subject matter, focused on other aspects of the two-part test, and specifically in the computer-software and business-method fields. The following case decisions (which I created last year – I’m sure more recent cases could be added) could be among those used to form examples related to the computer field:
- S. Bancorp v. Solutran, Inc., CBM2014-00076, Paper 16, pp. 12-14 (PTAB Aug. 7, 2014) (method of processing paper checks held “more akin to a physical process than an abstract idea” and not a “fundamental economic practice” despite claim limitations involving “crediting an account” and despite economic content, thus passing step 2A).
- PNC Bank v. Secure Axcess, LLC, CBM2014-00100, Paper 10, pp. 21-24 (PTAB Sept. 9, 2014) (transforming data by inserting an authenticity key held patent-eligible and not a “fundamental economic practice” under step 2A)
- JP Morgan Chase & Co. v. Maxim Int. Prods., CBM2014-00179, Paper 11, pp. 33-35 (PTAB Feb. 20, 2015) (secure data transfer method held patent-eligible despite reciting merely “generic computer hardware” because idea is not abstract where claim included tangible physical components, thus passing step 2A; also criticizes a proposed allegedly abstract idea as not being sufficiently tied to the claim language)
- Trading Technologies Intl., Inc. v. CQG, Inc., No. 05-cv-4811, slip op. at 6-9 (N.D. Ill. Feb. 24, 2015) (improved GUI for ordering commodities on an electronic exchange does not recite a fundamental economic or longstanding commercial practice, thus passing step 2A, and “inventive concept” of a “static display of prices” on a display or a display “along a common static price axis” allows passing step 2B).
Another approach the Office could use, instead of working to create a longer list of full examples, is to issue partial examples, directed to specific sub-issues. Such partial examples could clarify the more-systematic framework that I recommended earlier, and partial examples can offer contrasts to explain categories or descriptors, as I also recommended.
By “partial example,” I mean examples, mainly contrasting, of claims, or rejections, that properly or improperly meet certain parts of the test. By contrast, “full examples” are one, like those used now, where the Office generates a complete analysis (Step 1, Step 2A, and Step 2B) for a given claim. To illustrate a partial example, the Office might use a claim, but it also could use a piece of a claim, an “idea,” or even a rejection.
Partial examples could address such issues as the following.
Step 2A: Identifying abstract ideas
- Give several example claims and, for each, identify the overall purpose of the claim and explain how to derive the purpose.
- Give an example of a rejection that is improper because the examiner simply summarizes all the elements of the claim into a sentence and improperly identifies that as an “abstract idea.”
- Give examples of several “ideas” that an examiner should conclude are “abstract” and other “ideas” that the examiner should conclude are “not abstract.”
- Give examples of “economic practices” and other examples that are not “economic practices” even though they involve money in some sense.
- Give an example of a claim that is “directed to” a contract between people and an example of a claim that mentions a contract but is not “directed to” it.
- Give an example of a claim that “merely includes” an abstract idea and a claim that is “directed to” the same abstract idea.
- Give an example of an “economic practice” that, at a given time, was “fundamental” (i.e., “foundational or basic”) and an example of an “economic practice” that, at the same time, was not.
- Give an example of an “economic practice” that, at a given time, was not “long prevalent in our system of commerce.”
- Give examples of “concepts relating to interpersonal or intrapersonal activities” and examples that do not fit within that category.
- Give an example of a social-media claim that is directed to a “social activity” and another example claim that is not.
- Give examples of “certain methods of organizing human activity” that are eligible and other examples that are not eligible.
- Give an example of “an idea of itself.”
Step 2B: Identifying ‘significantly more’
- Give an example of an improper form rejection that does not analyze specific “additional elements” or that does not analyze the “claim as a whole.”
- Give two examples of claims, each of which “simply append well-understood, routine and conventional activities previously known to the industry” to an abstract idea, but with one of the claims doing so “at a high level of generality” and the other not.
- Give an example of a computer-implemented abstract idea that does not require just “a generic computer to perform generic computer functions.”
- Give an example of a “special-purpose computer.”
- Give various examples of added “extra-solution activity” that are both insignificant and significant. To be fair, on this point, the PTO last month released a set of training materials slides that contain contrasting claims derived from Example 21, which comes close to this suggestion. See Workshop Slides 17 and 24. But one example of contrast on this crucial “Step 2B” inquiry is not sufficient.
The examining corps’ over-use of Section 101 rejections, including the currently observed “form rejection” plague, which blocks patents on most computerized inventions, can be reined in via explanations of ambiguous language in the instructions through partial examples of this sort.
Examples can have explanatory power, but unless the PTO explains the wording in its instructions with contrasting statements of what is “not meant,” the guidance will continue to offer examiners with avenues to rejections, and there will be little material that can serve to bring the over-rejection problem under control. Examiners would like such instructions; applicants would find examination outcome more predictable and know how to respond to rejections better; and reduced rejections represents good patent policy and will benefit the U.S. economy.