The U.S. Patent and Trademark Office recently issued a bulletin explaining that on January 25th, a revised MPEP — Ninth edition (Revision 08.2017) of the Manual of Patent Examining Procedure (MPEP) was made available on the USPTO website.
While patent practitioners have been poring through the many additions listed in the Change Summary for the Ninth Edition, Revision 08.2017, much of our time has been spent looking at Chapter 2100 and Section 2106 Patent Subject Matter Eligibility [R-08.2017] which, of course, focuses on Alice/Mayo framework.
There are many ideas and strategies for addressing a rejection under 35 U.S.C. § 101, as there are many ways applicants will see an Alice-based rejection take form. While the MPEP is not binding law, the manual presents instructions for the examiners that can be used by applicants corresponding with the Patent Office. The patent bar can only hope that the 45,000 words added in MPEP § 2106 will provide more consistency in the rejections and allow for productive discussions and more fruitful amendment submissions.
My colleagues at TechPats manage several portfolios and prosecute patent applications—in addition to our well-known expertise in documenting evidence of use, reverse engineering, and laboratory testing—but this material should not be considered legal advice. Accordingly, the following thoughts on the revised MPEP and new case law should only be used for informational purposes and should be thoroughly checked before use.
1. Ensure the examiner meets the burden
Based on what we’ve heard from our fellow patent practitioners seeing each first Office Action featuring a subject matter eligibility rejection, there is a fairly good chance that the rejection under §101 is generated from either incomplete analysis or a copy-pasted form. Before offering amendments or characterizations of the invention, it is likely a good idea to emphasize the Office’s burden for establishing a prima facie rejection.
Prior to the MPEP revision, applicants had to cobble together USPTO Guidance from the Subject Matter Eligibility Interim Guidance portal to ask the examiner to provide the requisite reasoning and examples (still a great resource). Now we may cite to the MPEP itself.
The MPEP requires that “[i]n particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.” MPEP § 2106.07. In examining under Step 2A, “the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception.” Id. Specifically, “if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.” MPEP § 2106.07(a) (emphasis added). USPTO policy instructs that “[c]iting to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution.” Id.
Again, the hope with the new MPEP is that rejections under §101 are more consistent and cite court cases that demonstrate how the examiner views the claim as directed to an ineligible concept. No one suggests that asserting failure to make a prima facie case is a satisfactory traversal, but asking the examiner’s to follow the manual is a good first step.
If the follow-up Office Action adds a citation to a court case (and more reasoning), applicants may argue that inclusion is tantamount to acknowledging a failed rejection and the applicants are entitled to a new, Non-final Office Action under MPEP § 706.07. This is usually very fact-dependent, especially now as the MPEP states “[c]itation to a case that supports the original rationale would not be considered a new ground of rejection, unless there is a change to the basic thrust of the rejection.” MPEP § 2106.07(b). So be on the look out for when a Final Office Action adds a case that moves along from “the original rationale.”
2. Wrongly cited case or a bad example
When the rejection does include a characterization of what concept the claim is “directed to,” as well as comparison or citation to an example of an abstract idea, there are a couple avenues of addressing.
For one, it is a good idea to make sure that the cited example is a precedential case that says what the examiner alleges it to say. The examiner may have transcribed an improper comparison.
The MPEP cautions that “[e]xaminers should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context” and “Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas, and should avoid relying upon or citing non-precedential decisions unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decisions.” MPEP § 2106.07(a).
From there, the applicant can either address what the cited example really described or attempt to distinguish why the examiner’s characterization is different from the cited example. Both are likely uphill battles, but certainly worth preserving for a potential appeal opportunity.
3. The characterization of what the claim is “directed to”
The other strategy for addressing the Examiner’s comparison is to ask the examiner to reevaluate what he or she believes the claim is “directed to.” Again, the revised MPEP can be helpful as the applicants can question the characterization, e.g., (i) whether the claim was looked at as a whole, (ii) whether the claim merely includes an abstract idea, or (iii) whether the characterization is reasonable.
For instance, as many court decisions are turning on the substance of the corresponding specifications, it may be a good idea to ask the examiner to reconsider the rejection after re-reviewing the application as a whole (as well as some selected paragraphs):
The MPEP requires that “examiners should consider the claim as a whole when performing the Step 2A analysis.” MPEP § 2106.04. Specifically, the MPEP identifies that “[w]hen evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.” MPEP § 2106.07 Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility.
Moreover, asking the examiner to reevaluate the “reasonableness” of a broad interpretation of the claim (especially when amending that claim) may prove fruitful (See MPEP § 2106 Patent Subject Matter Eligibility, II. ESTABLISH BROADEST REASONABLE INTERPRETATION OF CLAIM AS A WHOLE).
A good reminder is that a claim merely involving an abstract idea is not necessarily patent ineligible. The MPEP states:
…[T]he courts have carefully construed this “exclusionary principle lest it swallow all of patent law” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas.” Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). See also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016) (“The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon”). Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis).
MPEP § 2106.04 (emphasis added).
Again, asking the examiner to change his or her mind is an uphill battle, but asking for consistency in the evaluation under the MPEP can be helpful when paired with amendments and or proffered alternative analysis.
4. Overgeneralizing the Claim(s)
Despite the caution above, one portion of the MPEP appears to encourage a broad interpretation of when the claim is “directed to” a judicial exception:
Step 2A asks: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? A claim is directed to a judicial exception when a law of nature, a natural phenomenon, or an abstract idea is recited (i.e., set forth or described) in the claim. While the terms “set forth” and “describe” are thus both equated with “recite”, their different language is intended to indicate that there are different ways in which an exception can be recited in a claim. For instance, the claims in Diehr set forth a mathematical equation in the repetitively calculating step, the claims in Mayo set forth laws of nature in the wherein clause, meaning that the claims in those cases contained discrete claim language that was identifiable as a judicial exception. The claims in Alice Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.” MPEP § 2106.04(II).
Of course, there is the MPEP language that “all inventions at some level  use… abstract ideas,” but the message is pretty strong in favor of rejecting under § 101. I believe this is very close to an overstatement of the case law, especially considering that there is little to no guidance in the revised MPEP on how an examiner should construct what the claim is “directed to” as consistently required by the Court of Appeals for the Federal Circuit.
While not mentioned in the revised MPEP, some recent case law has lent some language that may be helpful , for example:
Referencing Alice, the Federal Circuit has stated that “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, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). The Federal Circuit has also warned that “overgeneralizing claims, ‘if carried to its extreme, make[s] all inventions unpatentable because all inventions can be reduced to underlying principles of nature.’” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. 175, 189 n.12 (1981)). The CAFC also noted that the analysis “must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.” Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017). The USPTO has also provided guidance, saying, “Notable Points from McRO: Examiners should consider the claim as a whole under Step 2A of the USPTO’s SME guidance, and should not overgeneralize the claim or simplify it into its ‘gist’ or core principles, when identifying a concept as a judicial exception.” Memorandum – Recent Subject Matter Eligibility Decisions (McRO, et al), Nov. 2, 2016, p. 4 (emphasis added; https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-Memo.pdf).
5. Looking at Step 2B, the Inventive Concept
With regard to the analysis in Step 2B to determine whether any additional elements in the claim add significantly more to the exception, the revision identifies potential challenges and/or paths to fruitful amendments. If the only remaining issue for the application falls under §101, an amendment may be the best strategy to overcoming a patentability rejection, at least in the examiner’s eyes. Still the applicant is entitled to submit that the alleged inventive concept is seen when the claim is evaluated as a whole and/or the elements are considered in combination.
Of course, the applicant can always ask for the examiner to offer proper reasoning, especially if early in prosecution the examiner fails to address a specific element that may prove significant. For instance:
The MPEP requires that, for Step 2B, “the rejection should identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception” and “explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more” than the alleged judicial exception. MPEP § 2106.07(a) Formulating a Rejection For Lack of Subject Matter Eligibility (emphasis added). The MPEP further states that “the rejection should explain why the courts have recognized, or those in the field would recognize, the additional elements when taken both individually and as a combination to be well-understood, routine, conventional activities.” Id (emphasis added).
Sometimes practitioners may successfully identify an element that was left out of the 2B analysis as it was incorporated into the “directed to” concept in 2A without addressing the element as part of an improvement and/or inventive concept when considering the additional elements in combination. See MPEP § 2106.05(I)(B) “Examples Of How Courts Conduct The Search For An Inventive Concept.”
MPEP § 2106.07(b) “Evaluating Applicant’s Response” presents some ideas that may entitle the applicants to a fruitful re-evaluation, such as “amend[ing] the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception” or “present[ing] persuasive arguments or evidence based on a good faith belief as to why the rejection is in error.” When a good-faith amendment fails to evoke a change of heart, perhaps asking for an interview or Advisory Action prior to filing an RCE may improve the applicants’ chances:
The MPEP requires that “[w]hen evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter eligibility rejection,” and upon amendment, the “examiners should determine the amended claim’s broadest reasonable interpretation and again perform the subject matter eligibility analysis.” MPEP § 2106.07(b).
Lastly, there are significant portions of MPEP Chapter 2100 that reiterate “preemption” as the foundation for the Alice/Mayo analysis.
The MPEP mandates that “[i]f applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A [and] Step 2B.” MPEP § 2106.07. “Such reconsideration is appropriate because, although preemption is not a standalone test for eligibility, it remains the underlying concern that drives the two-part framework from Alice Corp. and Mayo (Steps 2A and 2B).” Id.
While no applicant wants to bring attention to a “design around” or alternative implementation of the invention, highlighting the specificity of the claim and citing the foundation of preemption in Alice—e.g., one or more elements as a whole or as steps in a combination—likely entitles the applicant to a reevaluation that could prove fruitful.