Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

By Christopher Hall
August 16, 2017

United States Patent and Trademark Office (USPTO) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent examination of claims in any technology that involves computers, controllers or processors.  Here is another useful strategy the patent practitioner can use in writing a response to an Office action, or an appeal brief.

Suppose a USPTO examiner has written a rejection that the claims amount to nothing more than the abstract idea of a mathematical calculation (or other abstract idea) plus the instructions to implement it on a generic computer, and are therefore directed to patent ineligible subject matter.  The patent practitioner could get into a back-and-forth argument with the examiner about whether or not claim limitations are significantly more than the abstract idea, wasting multiple cycles of examination because examiners can be very difficult to convince of this.  One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts.  But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”.

A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed).  Articulate a specific technological problem that the claims solve or are directed to solving.  Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.  Then, compare the abstract idea, for example “mathematical calculations” in and of itself, without the claim limitations that extend beyond the abstract idea, to the technological problem.  Does the abstract idea in and of itself, with or without a generic computer, solve the technological problem?  Of course not.  Does the abstract idea plus the claim limitations that extend beyond the abstract idea, solve the technological problem.  Yes, the combination of abstract idea plus claim limitations that extend beyond the abstract idea does solve the technological problem.  This means the claim as a whole amounts to significantly more than the abstract idea plus the instruction to implement the abstract idea on a generic computer.

This bright line test makes it very difficult for an examiner to prove that the claim is nothing more than an abstract idea implemented on a computer.  The examiner would either have to prove that the additional claim limitations are mere field of use limitations, which assertion is readily refuted through the above analysis, or that the claim as a whole does not solve the specific technological problem, which you have just demonstrated it does.

This carefully constructed argument passes logical rigor, and any attempts in further patent examination to defeat it can be addressed on a point by point basis with factually based logic.  For example, if the next Office action asserts (or repeats an assertion) that the claims amount to an abstract idea without significantly more, the patent practitioner can respond that the Office action has not shown that the claims do not solve a specific technological problem, and is therefore unresponsive to the previously presented arguments.  Added limitations (which can be cited directly) beyond the alleged abstract idea have been shown by Applicant to solve the specific technological problem and limit the claim to a specific technological solution thus constitute significantly more than the alleged abstract idea.  Applying specific facts here gives weight to the arguments, and counterpoints the Office assertions, which are argued as unsupported.

If the Office action asserts that the claim limitations are mere field of use limitations, the patent practitioner can respond that an abstract idea plus field of use limitations would still not solve the specific technological problem.  This argument can be reinforced with an example of a reduced set of added limitations that just capture field of use and the abstract idea, showing how this would not solve the specific technological problem.  This can be contrasted with cited added limitations that do operate to solve the specific technological problem, bolstering the original argument and answering to the latest assertion.

If the Office action asserts that some subset of claim limitations (e.g., one line of limitations, or one subparagraph of limitations) is nothing more than well known computer operations on a generic computer, or otherwise commonly known, the patent practitioner can shift the argument to looking at the claim as a whole.  The claim as a whole does include actions and/or structure that is not commonly known (and can be cited directly, or summarized) and therefore constitutes significantly more than the abstract idea.  As a whole, the claim presents a specific technological solution that solves the specific technological problem and is thus not commonly known.

Takeaways

  • Concrete statement of a specific technological problem that the claims solve or address lays a strong foundation for arguments of patent eligible subject matter under 35 USC §101.
  • Testing to see whether the abstract idea in a claim rejection solves the specific technological problem provides a basis for comparison with the claim as a whole.
  • Testing to see whether the abstract idea in combination with the claim limitations that are beyond the abstract idea solves the specific technological problem provides a comparison for the claim as a whole versus the abstract idea.
  • Once the abstract idea has been compared with the claim as a whole, in light of the specific technological problem, the conclusion can be drawn that the claim is significantly more than the abstract idea with instructions to implement it on a generic computer.

The Author

Christopher Hall

Christopher Hall is a registered patent agent at Womble Carlyle. He counsels clients in preparing and prosecuting patents in the electrical, telecommunications, computer software, and mechanical arts. In addition, he has 17 years of industry experience as a professional engineer, and is named as sole inventor or coinventor on 15 granted patents. He is a co-author of the High-Tech Patent Agent, a blog on high-tech patent issues in Silicon Valley.

For more information or to contact Chris, please visit his Firm Profile Page.

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 8 Comments comments. Join the discussion.

  1. Ternary August 16, 2017 1:22 pm

    Nice article, but it raises some questions. Is this advice based on experience or is it conjecture from your side? My experience is that examiners want to see a “use” limitation. They are generally not convinced by “Concrete statement of a specific technological problem that the claims solve.” They would like to see such statement in the claim. Which is often unnecessary functional claiming that may/will cause problems later on.

    I did a quick (and likely incomplete) search and did not find any of your personal or firm’s cases wherein you overcame a 101 Alice rejection on the basis of the arguments in your article and specifically as it relates to “mathematical calculations.”

    In one of my cases the issue is if something like a XOR function table, stored on a memory is performing a “modulo-2 addition” and thus is directed to an abstract idea, or is structural and is a device, such as LUTs (look-up tables) in FPGAs. It is structural, of course, but some examiners think otherwise. To have to argue these points during prosecution is an utter waste of time, it is completely unscientific and is a trap for inventors.

    That is why patent eligibility has to be (re)defined by Congress or Alice has to be explicitly rescinded by Congress (as has been suggested on this blog), and not addressed by clever arguments by Applicants.

  2. Professor August 16, 2017 7:04 pm

    You need to do more than solve a technical problem to survive 101. You need a new technical solution to a technical problem. It’s more about what’s both new and technical.

  3. Ben August 16, 2017 8:48 pm

    You guys know those “one simple trick” clickbait ads? Maybe Gene should advertise this article with something like: “Patent examiners HATE him. See how he got 50 business method allowances in an afternoon, with one simple trick!”

    It’d be about as accurate as those ads typically are.

  4. Mark Nowotarski August 17, 2017 9:05 am

    Ternary@1, have you tried looking up your examiner’s recent cases to see what arguments/amendments are persuasive? I find that this gives me a very quick read on whether or not I should strive to reach agreement with the examiner or instead get my case ready for appeal.

  5. Ternary August 17, 2017 10:48 am

    Mark@3 Reasonable advice. But I know what the Examiner wants. That is not the issue. The issue is that mathematical language (whatever that is, even the term Error Correcting Code is considered mathematical) triggers an Alice rejection, with all type of demands for amendments. And reasonable arguments like “significant more” and “improvement of the computer” are not effective.

    The fact is that an XOR stored table on a memory is a device. It is as much a device as a combinational circuit that performs the XOR. And however I characterize the table (as a modulo-2 addition, as an XOR, or as a Boolean expression of NANDs), the actual memory with the table is a device and does not perform arithmetic or Boolean logic and is not an abstract idea. (see a recent co-pending article from Gene). This whole nonsense of abstract idea should not even come up.

  6. Mark Nowotarski August 17, 2017 11:00 am

    Ternary@4. I feel your pain. There are other options available, but this really isn’t the forum. Feel free to contact me through my new web site http://www.survivingalice.com and perhaps we can discuss further.

  7. Ternary August 17, 2017 1:04 pm

    Mark@5. An issue with finding “significant more” arguments not persuasive and going after less substantial amendments is that the “directed to an abstract idea” argument remains unresolved. The Alice case itself could not have been saved from being ‘directed to an abstract idea’ by including more memories, processors and the like. That was the specific conclusion.

    The being directed to an abstract idea is undefined and relies on “I know it when I see it.” (An electronic calculator is directed to an abstract idea, that is for sure!). My concern thus is that when I argue in a response that the invention provides “significant more” or “improves the computer” (as suggested in this article) and these arguments are considered as unpersuasive and I overcome with insubstantial amendments, I still have an invention that is deemed to be directed to an abstract idea. As an infringer, I would latch on to that in post-issuance pursuit of invalidation. So the patent I obtained with clever prosecution is still pretty much useless until it ultimately passes the Federal Circuit Court.

    I am not looking for help in this, though suggestions are welcome. I am merely arguing that the whole Alice case is scientific nonsense and detrimental to obtaining strong and valuable patents. If a memory device or an MRI machine are deemed to be directed to an abstract idea, the system is running off the rails, as such a conclusion is nonsensical.

    The fact that some judges came to their senses by finally deciding that a memory is not an abstract idea and we have to applaud them for that reflects a dubious state of affairs. Patent eligibility has to be redefined by Congress.

  8. Fred Sinder August 18, 2017 11:15 am

    Chris,

    I like it, a lot, particularly if used as a way of thinking about the invention for application and claim drafting.

    I sympathize with the comments having difficulties with using this approach for overcoming a rejection. But, in that I try to write applications that, drawing on prosecution experience (mine and others), try to answer an examiner’s questions before he or she even has them, this may be even better in that it gives an examiner an intelligent and useful question (or approach) she or he would not have thought to ask on their own, then answers it and possibly preempts a rejection based on less useful questions (or approaches).

    Thanks again,

    Fred

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