A friend who handles large numbers of software patent applications for some of the most elite technology companies sent me an e-mail late last week about what he has already started seeing coming from patent examiners. He says he has seen the below form paragraph twice within a week. Most alarming, in one case the form paragraph came in the form of a supplemental office action, but the outstanding original office action didn’t have any patent eligibility rejections under 35 U.S.C. 101.
Claims… are rejected under 35 U.S.C. 101 because the claimed invention is directed to non statutory subject matter. In the instant invention, the claims are directed towards the concept of… [This] is considered a method of organizing human activities, therefore the claims are drawn to an abstract idea. The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims… are directed to non-statutory subject matter.
Did you notice the circular logic? The claims are abstract because the claims do not recite limitations significantly more than an abstract idea. Truthfully, this rather ridiculous logical construct can’t be blamed on patent examiners when the Supreme Court refuses to provide a definition for what is an abstract idea.
Did you also notice the mention that the claims require no more than a generic computer? Does that mean that software that operates across platforms is not patentable because it operates across platforms and on any number of different machines? Must it work on only a single machine? It would be rather idiotic for software to be patent ineligible for cross platform operability when that is one of the most powerful and sought after features of software. I have been critical of the general computer versus specific computer construct for just this reason for years. Truthfully, the nonsense about general and specific purpose computers is a distinction without a difference created by those who really don’t understand software, or computers.
Aside from the substance of the rejection, the larger concern is that if patent examiners are issuing Alice rejections in office actions where no previous patent eligibility rejection existed things are indeed very different post decision. There is no doubt that in the mind of the Patent Office, or at least some examiners, Alice has dramatically changed the playing field. How else could you explain no 101 rejection at all before Alice is decided and a supplemental office action sent in the early aftermath?
Clearly this form paragraph does not come from the initial guidance the USPTO sent to examiners. In that initial guidance Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, told patent examiners that “the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, USPTO told patent examiners that while the framework of the analysis had changed the substance of the analysis had not changed. So where then did this form paragraph come from? If the substance hadn’t changed why would there be a supplemental office action issued in a case where there was no 101 rejection previously?
With multiple patent examiners in different cases using the above form paragraph we have to acknowledged that it had to come from somewhere. This deviation from the initial guidance to patent examiners is alarming, as is the fact that the USPTO after issuing the initial guidance seemed to get blow back from somewhere and is asking for comments on their initial interpretation of the meaning of Alice v. CLS Bank. This is highly unusual in the case of quick, initial guidance. They are doing it under the guise of allowing further comment on the Mayo/Myriad guidelines, but the recently published notice quite clearly explains:
The United States Patent and Trademark Office (USPTO) has issued preliminary instructions on Alice Corp. to the patent examining corps and these preliminary instructions have been posted on the USPTO’s Internet Web site. The USPTO is inviting public comment on the Alice Corp. preliminary instructions.
I suspect that the Obama Administration, which has been taking its guidance on patent issues from Google, must have been uncomfortable with the “nothing has changed” approach the USPTO career officials wanted to take.
Many thought my initial reaction to the Supreme Court decision in Alice was incorrect and too pessimistic. As more and more rejections filter through to patent applicants, and as we start to see decisions from district courts start to come in, I suspect my view of the way the decision will be interpreted will be far more accurate than those who said that the decision didn’t present any problems whatsoever. Time will tell, I continue to hope I’m wrong, but things seem to be taking a turn for the worse already.