Is Enfish Much Ado About Nothing?

By Scott Zimmerman
June 8, 2016

Question slot machineEnfish bothers me.  The Federal Circuit decision puts forth some great phrases that endorse patentable subject matter for software and for improvements in computer technology.  At first glance Enfish also appears be a Step 1 tool for avoiding Step 2 of the Mayo/Alice framework.  But when I delve into the decisional details, I simply do not like what I read.  The Enfish panel was heavily influenced by the “specification’s emphasis” of the “invention,” the specification’s stated “benefits over” conventional prior art, and the “specification’s disparagement” of the conventional prior art.  So when I look for ways to analogize the Enfish facts to other Step 1 characterizations, I rarely see specifications that emphasize the “invention” and its “benefits over” the “disparage[d]” prior art.  If examiners and the PTAB require strict adherence to the Enfish facts, I am thus skeptical that Enfish will help avoid Step 2 of the Mayo/Alice framework.

First, let’s start with the good.  The Enfish decision includes a paragraph that makes all owners of software patents breathe a sigh of relief:

We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

The panel then focuses on Step 1 of the Mayo/Alice inquiry.  Step 1 “asks whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”  “In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”  The panel thus states that “the claims at issue in this appeal are not directed to an abstract idea,” but rather “they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”

Importantly, the panel disagrees with the district court’s characterization of the claims.  The district court construed the five claims at issue under §112, paragraph six and concluded that the claims were directed to the abstract idea of “storing, organizing, and retrieving memory in a logical table” or “organizing information using tabular formats.”  The defendant Microsoft also offered its own characterization.  “However, describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.”  Enfish, instead, finds that the claims “are specifically directed to a self-referential table for a computer database.”

At first I was encouraged. Enfish expressly rejects “such a high level of abstraction” that is “untethered from the language of the claims.”  I often encounter an Examiner’s Step 1 claim characterization that is so broad as to make Step 2 of the Mayo/Alice inquiry inevitable.  Indeed, recall that the Supreme Court condensed claim 33 of Alice (at approximately 200 words) down to the abstract idea of “intermediated settlement.”  So when I read that Enfish is narrowing the Step 1 claim characterization, I hoped Enfish would be a powerful tool.

Yet I was soon discouraged.  Even though Enfish narrowed the claim characterization (“specifically directed to a self-referential table for a computer database”), the panel heavily relied on the “specification’s emphasis” of the “invention,” its “benefits over” conventional prior art, and the “specification’s disparagement” of conventional prior art (emphasis added).  For example, the “necessity of describing the claims in such a way is underscored by the specification’s emphasis” of a self-referential table (emphasis added).  The “specification also teaches that the self-referential table functions differently than conventional database structures,” which are “inferior to the claimed invention.”  The specification states how the “database of the present invention” does not require certain structural features of the prior art.  “Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements” (emphasis added).  Enfish even cites to the recent Openwave decision (summarizing “a specification’s disparagement of the prior art is relevant to determine the scope of the invention”).  The panel then concludes:

In sum, the self-referential table recited in the claims … [is] designed to improve the way a computer stores and retrieves data in memory. The specification’s disparagement of conventional data structures, combined with language describing the “present invention” as including the features that make up a self-referential table, confirm that our characterization of the “invention” for purposes of the § 101 analysis has not been deceived by the “draftsman’s art” (emphasis added).

I am thus concerned that Enfish will not be as useful as hoped in overcoming §101 Alice rejections.  The patents at stake in Enfish appear to have been written with a confident view of the prior art and of the invention.  So, if a specification does not confidently emphasize the “invention,” its “benefits over” conventional prior art, and “disparage” the prior art, will examiners and judges continue Step 1 characterizations at “such a high level of abstraction”?  Is Enfish merely much ado about nothing?

The Author

Scott Zimmerman

Scott Zimmerman is a patent attorney in North Carolina with nearly 25 years’ experience. Scott focuses his practice on IP counseling and sophisticated patent prosecution for high-value, targeted claims. He has obtained over 1,000 patents for clients, including Fortune 10 companies, emerging startups, and garage inventors. Having both mechanical and electrical engineering degrees, Scott has deep technical and legal knowledge of mobile communications, computer software, computer hardware, blockchaining, automotive, and mechanical technologies. Prior to becoming a patent attorney, he spent several years as a chassis engineer for General Motors. Scott enjoys home repair/remodeling and personal fitness.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 15 Comments comments.

  1. Night Writer June 8, 2016 8:11 am

    My prediction is that this is an attempt at judicial legislation of putting in a technical test. My guess is that this is just the first in a line of cases to try to make our 101 like Europe’s through judicial activism. I like too that the person writing this has no patent law background and no technology background so the odds of Hughes actually understanding any of this is pretty much zero. He is likely just being spoon fed and the fact that a federal circuit judge who is obviously so poorly qualified to sit on the Fed. Cir. is making our patent laws is beyond absurd.

    I agree too that the whole notion that 101 is determined based on the specification and its placement of the invention is absurd. And, I will note that this case should make SJ inappropriate for any software case without the opportunity for expert testimony regarding the benefits of the invention.

    I have to say that the whole Alice/101/functional claiming/etc. is just not law. It is absurd nonsense.

  2. Brent Reynolds June 8, 2016 9:39 am

    “Likewise, Microsoft urges the court to view the claims as being directed to
    ‘the concepts of organizing data into a logical table with identified columns and rows where one or more rows are used to store an index or information defining columns.’ Appellee’s Br. 17. However, describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule….

    Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.”

    This is the part of Enfish I like best. The Court basically says you can’t take individual claim elements and analyze them at a level of abstraction for step 1 of the Alice test. You can’t say that a patent that covers a specific implementation of X is abstract because generally X is abstract. Step 1 requires you to analyze the actual invention. The district courts and PTAB have not been doing that uniformly at all.

  3. Night Writer June 8, 2016 9:48 am

    @2 Brent. Good point. I just want a lot more. An end to this silliness.

  4. Bob June 8, 2016 10:23 am

    It’s truly a shame that so many software applications are drafted without a “confident” view of the prior art and the invention.

  5. Night Writer June 8, 2016 11:10 am

    >>without a “confident” view of the prior art

    The problem is prosecution. If you put in the problems the invention solves with the prior art, the examiners will just reject it under 103 as an obvious improvement over the prior art to solve the problem you have mentioned. I’ve had rejection based just on the background.

  6. step back June 8, 2016 11:52 am

    Why is everyone bending over and opening wide for another ram rod of SCOTUS scrum?

    There is no “directed to” requirement in the patent statute. There is no “gist of the invention” basis for rejecting in the patent statute. 35 USC 112 says, “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor (or a joint inventor) regards as the invention.” It doesn’t go on to say, “but that will be ignored at first and a decision maker at any adjudicative level will first decide what the claim is truly directed to and will reject the patent in whole based on a sample claim of his or her arbitrary choosing.”

  7. Old guy June 8, 2016 12:00 pm

    When I was a young attorney back in the late 70’s, I was taught to discuss the advantages that the invention (or at least the preferred embodiment) has over the prior art in the specification, to build the case for non-obviousness. I always thought that was good advice, even when TSM was the obviousness standard.

    I think law schools taught attorneys a decade or so ago never to talk about advantages because back when TSM was the standard, invalidity challenges were not as much a concern as non-infringement arguments that were built on saying that the accused structure does not provide all of the advantages.

    But in the atmosphere of today, with Scotus telling the PTO and District Judges to kill patents on sight, whether using 101 or 103, you need every tool to preserve validity that you hang your hat on.

    So routinely recite advantages!

  8. Curious June 8, 2016 1:36 pm

    If examiners and the PTAB require strict adherence to the Enfish facts
    They only require strict adherence to the facts when you are making the argument. However, if the PTAB and/or Examiner wants to sinks your claims, the necessary facts become quite malleable.

    the panel heavily relied on the “specification’s emphasis” of the “invention,” its “benefits over” conventional prior art, and the “specification’s disparagement” of conventional prior art
    I’m not so worried about that. The issues at hand are whether the claims, as a whole, are directed to an abstract idea without anything substantially more. Whether or not the specification disparages the prior art and identifies benefits over the prior art does not speak to those issues. Consequently, there should be no requirement for either.

  9. Curious June 8, 2016 1:46 pm

    If you put in the problems the invention solves with the prior art, the examiners will just reject it under 103 as an obvious improvement over the prior art to solve the problem you have mentioned.
    There is a difference between a known problem and an unknown problem. As stated in KSR, (“subject matter can be proved obvious .. by noting that there existed at the time of invention a known problem for which there was an obvious solution … any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). If you can represent this is a problem that was recognized only by the inventors, then I think it is worthwhile to put into the specification. As stated by the Federal Circuit ,”an invention can often be the recognition of a problem itself.” See Leo Pharmaceuticals Products v. Rea, 726 F.3rd 1346, 1357 (Fed. Cir. 2013).

  10. Night Writer June 9, 2016 8:54 am

    @9 curious. I know Curious, but that seldom helps.

    @7 Oldguy. It didn’t change because we were taught differently. It changed because the PTO changed the way they examined patent applications in view of KSR. It was generally OK with TSM to put stuff in the background, but after KSR it was a disaster. And now it is worse than ever. Examiners have no qualms basing a rejection completely on your background.

  11. Doug Gilmore June 9, 2016 10:08 am

    Enjoyed the article and discussion, Scott. Thanks for the post. Will be interesting to see how things develop with §101 analysis.

  12. step back June 9, 2016 10:11 am

    Old Guy @7,

    I’m sort of an old guy too.
    The kinder gentler USPTO of yesteryear is no more.
    The pro-inventor CAFC of 1983 is no more.

    We are in an era of all out war against inventors.
    Anything you say (even if you don’t say it) will be used against you.

    If you thought section 112 let’s the inventor define that which he claims as “his” invention, think again. After Alice/Mayo, the examiner tells you what your invention is “directed to”. And surprise. It’s always directed to an abstract idea that is merely implemented on conventional routine generic computing paraphernalia. Inventions don’t exist anymore. Everything is abstract, or natural phenomenon that is implemented by obvious conventional means. All patent practitioners are merely “deceptive draftsmen” trying to cloak ineligible subject matter in eligible appearing but transparent clothing. /end sarcasm

  13. Doug Gilmore June 9, 2016 10:15 am

    If we will ultimately be required to admit or disparage prior art anyway, does anyone have thoughts on bringing back Jepson claims for software and business methods? At least then the concept of an “improvement” would be in the claim itself.

  14. Anon June 9, 2016 2:24 pm

    Pardon my French, Doug, but half-@ssed measures that smack of appeasement like you suggest (Jepson) is exactly like trying to get rid of the wolf at the back door by trying to fill him up with steaks.

    Appeasement does not – and will not – work.

  15. Daniel Cole June 17, 2016 8:51 pm

    You all should check out the blog post I wrote over on about Kappos attempts to get congress to remove section 101 from the patent law. Enfish is a great example of how screwed up 101 analysis is. I agree they would like a technological requirement like Europe but the Courts are not where that should happen (and it shouldn’t happen).

    I do think the lesson here is a little difference. I have always talked about how the aspects of the application I am writing are different than the prior art and how they solve a problem the prior art leaves open. This is how you create a story and help influence the examiner to allow the application. Enfish just highlights the use of this practice and makes it even more important for software patents. How you claim things must change as the law changes.

    I do worry though like the author that this will get overturned as in Alice the supreme court did seem to take the claims to a level of abstraction much higher than the Federal circuit did here.