Examining Confusion Between the Chamberlain and Berkheimer Decisions at the Federal Circuit

“Rather than look to the improvement as the possible ‘something more’ that overcomes the well-understood, routine and conventional standard, the Chamberlain panel took that standard and applied it right back to the improvement itself.”

If you’re reading this blog, then you likely are an avid follower of the Section 101 saga. The most recent episode in this saga, Chamberlain v. Techtronic at the Federal Circuit, is about so much more than a garage door operator being an abstract idea. It’s about the fact that we still have no clue what’s supposed to happen in the 2A and 2B steps of the judicially-created Alice/Mayo test.

**From Mayo to Mess**

In Mayo and Alice, the Supreme Court told us that an abstract idea needed “something more” than what is well-understood, routine and conventional (WRC) to be patentable.

Sure.

Then, Berkheimer v. HP came along a year and a half ago and said something very interesting: if you have an abstract idea under 2A, you can overcome the abstract idea finding by showing that the claim is directed to a purported improvement under 2B. (“[W]e must . . . ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” Berkheimer at 11.) In other words, the improvement to the computer functioning is a showing of that “something more,” rendering an abstract idea (the computer functioning alone) to be more than WRC.

However, now, we have to question whether this standard established by Berkheimer will be sustained in light of the Federal Circuit’s more recent precedential Chamberlain decision.

I know what you’re thinking: Isn’t that what Chamberlain did? The panel assessed the CGI’s improvement after all. (“The asserted claims here are not limited to a specific implementation of a technological improvement to communication systems. Rather, they simply recite a system that wirelessly communicates status information. Nor do the asserted claims ‘focus on a specific means or method that improves the relevant technology.’” Chamberlain at 7.)

**Reading Berkheimer Backwards**

No. The Chamberlain panel applied the Alice/Mayo test completely backwards compared to what the Berkheimer panel said. First, the question of improvement was assessed in Chamberlain’s “Step One” (or 2A). Not only that, the panel then immediately went on to find that “(t)he specification admits that the act of transmitting data wirelessly is ‘well understood in the art,’ and no other changes to the generically claimed movable barrier operator are recited in the asserted claims or described in the specification.” Chamberlain at 7.

What is happening in Chamberlain? Rather than look to the improvement as the possible “something more” that overcomes the WRC standard, the Chamberlain panel took the WRC standard and applied it right back to the improvement itself. The purported improvement here was to improve a garage door opening system by providing a wireless communication system to communicate status information for a garage door opener. The panel limited the improvement here to just wireless communication of status, ignoring the setting of its implementation, which was to a garage door, and then found the method of wirelessly communicating status to be well-understood in the art. In other words, the purported improvement is not an improvement to a garage door system by providing a wireless communication system, which I believe is what the appellant was arguing. Rather, the improvement is just limited to a wireless communication system, which greatly enhances the standard of what that improvement must be under a patentability analysis.

This means that the Chamberlain panel took the very obstacle the improvement was supposed to overcome and applied it right back to the improvement. That’s like putting the cart on the horse!

The table below outlines the main differences between Berkheimer and Chamberlain in terms of how they applied the Alice test:

Confusing the Search for Something More

Notice the key difference: in Berkheimer, the improvement is assessed in Step 2B, while the improvement is assessed in Step 2A in Chamberlain. And yes, it matters when you assess the improvement. Why? Because, as stated before, when the improvement is assessed in 2B, it becomes a showing of something more. But if the improvement is assessed in 2A, the claim now needs to have something more than the improvement in 2B. And if Chamberlain’s assessment of patentability is utilized, once the purported improvement is found to be an abstract idea under 2A, then there’s nothing to save the claim from unpatentability under 2B, practically speaking. The purported improvement is always a claim’s basis. So, if that’s an abstract idea, what is even the point of looking at the rest of the claim in 2B?

Another reason the disparity between these decisions is not a good thing is because it confuses us! On the heels of Berkheimer, the USPTO promulgated the new Section 101 Guidelines in January. These are lovely, lovely guidelines that told the Examining Corp to look for an improvement as a separate step from the traditional 2A “is this an abstract idea?” step. (Prong Two considerations: “Limitations that are indicative of integration into a practical application: Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a).”)

Could Have, Should Have

What if the Chamberlain panel had found that the main reason for a finding of unpatentability was that the claim failed to recite how the wireless communication was for specific implementation to a special purpose machine? That is, CGI’s wireless communication system could have been implemented generically to many types of machines and apparatuses, not just to a garage door. The Chamberlain panel actually suggested that they considered this issue into their finding of patentability. (“[T]he ’275’s claims, like Bascom’s, are patent-eligible because they ‘carve out’ a specific implementation (a specific type of operator with an integrated controller and wireless transmitter to transmit status information) that provide [sic] greater flexibility than the prior art physical interfaces approach.” Chamberlain at 10.)

If that’s the case, then it’s not the most unreasonable grounds for a finding of unpatentability. The panel could have said that CGI’s improvement (the wireless communication system) failed to show something more than what is WRC because the claim failed to recite how the wireless communication was specifically to be implemented into a special machine or apparatus. But they could have done all of that in 2B and remained consistent with Berkheimer, without turning the WRC standard onto the purported improvement in 2A. The Patent Trial and Appeal Board actually does it all the time. (See Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019); Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019); Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019); Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019)).

There was no need to parse out the purported improvement in 2A and apply the WRC test to the improvement in 2A. The Chamberlain decision cites a lot of precedent that appears to have done something similar, namely Core Wireless v. LG. But if the Federal Circuit was telling us that they were willing to change course in Berkheimer, what is the point of Chamberlain? Really, what is “something more” anyway?

Wen Xie Wen Xie is a U.S. Patent Attorney and Partner at Global IP Counselors. She is a prosecutor with a comprehensive understanding of the patent process in the United States, Europe, [...see more]

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

25 comments so far.

Concerned
September 13, 2019 08:24 am
Benny @9: Did you have a chance to go back and look at the examiner’s response with the following:

1). Did the examiner ever address why the tracking the parent of an adult is routine, conventional and well understood or did he just ramble about how a generic computer does not save an abstract idea? I’m not claiming a generic computer. I’m claiming the inventive step of tracking the parent to solve a technical problem and such tracking has been used in commence in any field. Who tracks the adult parent of an adult child anywhere on Earth?

2). Did the examiner ever state why the inventive step is not a practical application? Or was it more rambling about his abstract views? Please see page 14 of his response.

Thank you. Looking forward to your reply for consideration of my rebuttal.

Ternary @13: Thank you again. I cut and pasted your reply, it will be incorporated in our rebuttal, then off to PTAB.
concerned
September 13, 2019 02:23 am
B @27: The actual holding of Alice Corp. is such that claims so rejected should be rare.

And then the USPTO reduces everything that uses a computer to abstract, therefore, it must improve the computer itself. Alice did not imply either of those two USPTO applications.

And sure the Director says “practical application” publicly but his examiners do not follow. And neither do the courts follow “practical application” even though Benson said:

Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).

It really seems that Alice was “code” for eliminate software patents at all costs since SCOTUS will not correct their own insanity or any one else.
B
September 12, 2019 05:48 pm
@ Night Writer “CAFC. They could easily cancel out Alice.”

The CAFC is too incompetent to actually read Alice Corp. They’ve gone all special-ed and are charting new idiotic theories of patent law divorced from statute and case law.

The actual holding of Alice Corp. is such that claims so rejected should be rare.
Curious
September 11, 2019 05:46 pm
What was claimed was an existing garage door, recited to differ solely in that a signal was transmitted wirelessly, with no disclosure (or claim recitation) of structure.
If so, why wasn’t this obvious? I’ve been practicing since before this patent was issued, and based upon my experience, at no time would I ever expect a patent to issue where the sole difference was information being transmitted over a wire versus being transmitted wirelessly — not even close.

As such, what I STRONGLY suspect is that the Federal Circuit (as it is very apt to do) has characterized the “invention” with such broad strokes as to eliminate what has truly made this invention distinctive over the prior art. In other words, there is something more there than what the Federal Circuit is describing.

What was claimed was an existing garage door
An improved garage door — patentable subject matter under 35 USC 101 “Whoever invents or discovers any new and useful … machine … or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

At best, this claim recites an existing structure coupled with a mere idea.
Stop parroting and start thinking. The wireless transmission of data (assuming, for sake of argument, is the only distinguishing feature) is not a “mere idea.” Ideas don’t transmit data — wirelessly or not. Rather, technology (i.e., a machine or a process tied to a machine) is used to transmit data. While the term “wirelessly” does not invoke specific structure, it does invoke some structure.

The problem with the 35 USC 101 jurisprudence (among others) is that is loaded with words that have undefined meanings and/or meanings untethered from their common meanings. These phrases include: “abstract idea,” “mere idea,” “substantially more,” “directed to,” “well, understood, routine, and conventional,” “inventive concept,” “general purpose computer,” “as a whole,” “improvement in computer functionality.” If you ask ten patent attorneys what these terms mean, you might get ten different answers for each. That is a serious problem.
Anon
September 11, 2019 04:39 pm
TFCFM,

You are (again) — and whether purposefully or otherwise — sounding like Malcolm Mooney in attempting to elevate the optional claim format of “structure” to be more than merely an option.

IF you want to challenge the claim on the basis of the claim — as a whole — is the same as prior art structures, then the proper patent doctrine to use is inherency. It is NOT as you attempt to do here.
TFCFM
September 11, 2019 10:32 am
@#11 Curious: “They were not claiming the mere idea of transmitting a signal wirelessly. They were claiming a garage door — you know, the whole “invention as a whole” concept that applies to all of the patentability standards.

What was claimed was an existing garage door, recited to differ solely in that a signal was transmitted wirelessly, with no disclosure (or claim recitation) of structure.

At best, this claim recites an existing structure coupled with a mere idea.
Anon
September 11, 2019 09:56 am
As I have posted (in detail) previously, there is plenty of “blame” to go around, but the clear party with the most to blame is the Supreme Court, as it is that entity that is at the ROOT CAUSE of the troubles with patent eligibility.

Sure, some may postulate what other entities may do in a reactive mode, but let’s apply some fundamental problem solving techniques here and NOT treat symptoms when we need to identify the underlying problem.
Night Writer
September 11, 2019 07:52 am
@16

CAFC. They could easily cancel out Alice.
concerned
September 11, 2019 06:24 am
Pro Say:

In my opinion, the USPTO. The examiners do not follow their own memos and dodge arguments in favor of the inventor. It appears the USPTO’s mission is to not grant patents.

As Ternary pointed out, the examiner completely dodged the practical application question. I readily noticed that the examiner further dodged the tracking of the parent of an adult child (my inventive step), not one word on the matter. The examiner’s complete argument was regarding generic computer functions (I am not claiming a generic computer or its functions.)

A computer is used to implement the first ever tracking of a parent of an adult, much the same as the Wright Bros used known parts to create the airplane to accomplish a first ever inventive concept of controlled flight. Good thing the Wright Bros did not have a computer and they would have received the Alice drilling.

The USPTO had everything needed to grant my patent, the university studies documenting the problem, the solution never used in commerce, the Berkheimer ruling, their own USPTO memos, etc. I pay good money to get this kind of treatment.

IMO: The USPTO, however, I get the feeling I will get drilled all the way up the line.
Pro Say
September 10, 2019 07:10 pm
By a show of hands:

Who’s the greatest eligibility death squad — the Board / PTAB or the CAFC?
Concerned
September 10, 2019 04:58 pm
Ternary:

Yes, a huge problem with their network as you described. Thank you for your review and comments!

The two examiners, as the USPTO switched them on me, have dodged many issues.

Thank you again!
Anon
September 10, 2019 04:57 pm
One day the courts and the USPTO will just go back to calling these analyses what they are, a poor mans’ obviousness determination.
Ternary
September 10, 2019 04:20 pm
I assume that your claims address a real and costly problem in a large administrative computer system and solves the technical problem of the inability to correctly establish eligibility for SSDI. Your solution improves the technical environment of an administrative computer system. An improved program is a technical solution. The claimed system can now resolve issues it could not before.

The Examiner’s Answer on page 14 as to the practical application is how I recognize what I would call “unserious answers.” Clearly there is a practical application. But the Examiner merely uses the opportunity to say again that the idea is ‘abstract.’ That of course defies the purpose of the ‘practical application’ test, which basically says ‘the claims may be directed to an abstract idea, but is there a practical application?’ The Examiner in his Answer says: it is an abstract idea, it uses the elements that I (Alice) find abstract, for that reason the claims are not integrated in a practical application, but are an abstract idea.’ That is of course nuts. If you get to that test it has already been established that the Examiner finds it an abstract idea. We do not need a regurgitation of his arguments why. We now want arguments why this is not a practical application, which are not provided. Unserious!
Concerned
September 10, 2019 12:57 pm
Benny: Thank you for the review.

In your opinion, do you think the examiner ever addresses the inventive step of tracking the parent of an adult? Is this inventive step ever used in commence in any field to your knowledge. If you cannot think of one situation anywhere, can this inventive step truly be routine, conventional and well understood? (BTW: The examiner cold not)

Alice never mandated that the computer be improved, only that it can save the claims if the computer is improved when using an inventive step on matters long prevalent in commerce. Can something be long prevalent in commerce if never used?

Also, SCOTUS in Benson (1972) maintained that concepts that are a new and useful end are patentable. What is your opinion of a concept that solved a problem never achieved by 100s of thousands of working professionals and experts since day one or 63 years to be exact= Is this a concept that is new and useful? If not, then what is new and useful= a process that solves a problem not achieved by 1 million working professionals and experts for 100 years? Are we swallowing all of patent law?

In your opinion, assuming that there is no inventive step, do you have any reasonable explanation how my inferior data using a generic computer could ever solve a problem that experts could not using better tools and a dedicated network? What is the logical explanation?

Fyi: The claims never process routine SSDI application, never ever. The examiner reduces our claims to such. We are not claiming such, only the tracking of a parent for an adult over decades and cost efficiently (under $6,000.00)

Thank you for your upcoming thoughts!
Curious
September 10, 2019 12:38 pm
Plainly, then, the “inventors” were claiming the mere idea of transmitting a signal wirelessly, applied to broad field of garage door openers of known type. There isn’t so much as a hint of an invention here, obvious or not.
No. They were not claiming the mere idea of transmitting a signal wirelessly. They were claiming a garage door — you know, the whole “invention as a whole” concept that applies to all of the patentability standards.

There isn’t so much as a hint of an invention here, obvious or not
If there isn’t an invention here, then that is what 35 USC 103 is for.

The phrase “slippery slope” is often described as a logical fallacy. However, the Federal Circuit has shown that this characterization is accurate. We have gone from “the basic tools of scientific and technological work” (Benson) to “a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” Bilski/Alice. However, the Federal Circuit did not stop there. They’ve invalidated a transit payment system that required specialized technology (Smart Systems) as well as a vehicle charging station (ChargePoint) and routing message packets over a communication network (Two-Way Media). All of these inventions are intrinsically tied to technology but have been declared “abstract ideas” by the Federal Circuit. If the Federal Circuit can find a way to declare an invention to a garage door directed to any abstract idea, what technology is safe from the reaches of 35 USC 101?

With the Federal Circuit’s use of analogous cases to further along the ever-widening scope of what doesn’t fall within 35 USC 101, all it takes is a single panel at the Federal Circuit to agree with an argument that some technology is, in fact, actually “abstract” to continue the widen the scope — i.e., we continue to go down the slippery slope. Outside of the Supreme Court fixing the mess they started (while the Federal Circuit made the mess, the Supreme Court stated the mess), the only way this gets fixed is if the legislature steps in.
B
September 10, 2019 11:46 am
Hey Wen,

“Chamberlain v. Techtronic at the Federal Circuit, is about so much more than a garage door operator being an abstract idea. It’s about the fact that we still have no clue what’s supposed to happen in the 2A and 2B steps of the judicially-created Alice/Mayo test.”

Many of us know. Just darn few at the CAFC. According to the CAFC, because the improvement is in the abstract, the improvement doesn’t count and therefor not of help. This stupidity started with Taranto in EPG then later Investpic.

I first argued the evidence issue a la Berkheimer a year before Berkheimer. I believe you were there. Taranto thought I was an idiot for pushing an issue he later signed onto in Berkheimer. Regardless, I think the point is that Alice/Mayo is a capricious veto used by judges too stupid to put together even a bad s103. Just announce no “incentive concept” or declare the inventive concept is abstract or just lie about the fact pattern. Also feel free to ignore any troublesome limitation you want. That is the CAFC’s Alice/Mayo doctrine.

It’s not about a coherent standard. It’s about avoiding one at all costs. Wonder why the CAFC will not agree to an en banc decision?

Wait for the American Axle decision and be amazed. It’s months overdue. The CAFC is itching to kill the patent but can’t figure out how to do it without looking totally incompetent. That and Judge Moore is wrestling with her co-panelists for sanity.

Great article
Benny
September 10, 2019 11:17 am
Concerned @4, I took a look at the file wrapper of your application (you gave us the number a couple of weeks ago), my personal opinion is that the examiner has presented a valid rejection.
Ternary
September 10, 2019 10:28 am
“… it’s not the most unreasonable grounds for a finding of unpatentability.” But it is still a nonsense reason for patent ineligibility. We should not buy in to an assumed, undefined and constantly changing notion of what ‘abstract idea’ or ‘directed to an abstract idea’ means, should mean, could mean, maybe means, etc.

Equating a physical device or a physical method to an abstract idea is nonsense. It is not rational, it is unscientific and it is unworkable. There is no rational way to come to a predictable conclusion in applying such an interpretation. Alice again proves what engineers have long known to be true: garbage in-garbage out.
TFCFM
September 10, 2019 09:33 am
“Rather than look to the improvement as the possible “something more” that overcomes the WRC standard, the Chamberlain panel took the WRC standard and applied it right back to the improvement itself.”

I trust the author will find no disagreement that Alice/Mayo is an unworkable test. There seems to be no dispute on that score.

In the bigger picture, though, it seems clear to me that — however poorly the test might presently be stated — the right outcome is issuing.

In Chamberlain, for example, there was no dispute that the garage-door-opening system was identical to prior ones, except that a piece of information previously transmitted “wirefully” was proposed to be (in no particular way) transmitted wirelessly. Even ignoring the specification’s unnecessary admission, it was plainly routine to send a signal from point A to nearby point B either through a wire or wirelessly.

The only “improvement” even remotely claimed here was that the inventors claimed to be the first to harness the immense power of “duh” to transmit a signal wirelessly in devices that had previously used a wire. Moreover, no particular mechanism or method for performing that transmission was recited — meaning that the claim encompassed ALL mechanisms and methods. Plainly, then, the “inventors” were claiming the mere idea of transmitting a signal wirelessly, applied to broad field of garage door openers of known type. There isn’t so much as a hint of an invention here, obvious or not.

The Alice/Mayo test may well not fit this fact pattern well (but does it really suit ANY fact pattern well?) The outcome is nonetheless correct.

It’s up to clever folks like us to work out a workable test that Congress can direct the courts to apply to defining the kinds of “stuff” that can be patented. Cases like this one demonstrate the sense of designing that test to exclude patentability for “ways of achieving goal X, regardless of how that goal is achieved.”

(I’m not being coy. If I knew the perfect test, I’d spit it out.)
Curious
September 10, 2019 09:01 am
This article fails to appreciate how Berkheimer and Chamberlain got to the Federal Circuit. Berkheimer got to the Federal Circuit on a motion to dismiss. Chamberlain was after a jury trial. As stated by the Federal Circuit in Berkheimer, “[w]hether claims 4-7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims.” The Federal Circuit never passed on whether the invention is patent eligible (i.e., “We do not decide today that claims 4-7 are patent eligible under § 101. We only decide that on this record summary judgment was improper, given the fact questions created by the specification’s disclosure.”)

In Chamberlain, the Federal Circuit’s error involved something different than that addressed in Berkheimer. First, the Federal Circuit states that “the broad concept of communicating information wirelessly, without more, is an abstract idea.” As I have written elsewhere here, this is total BS. Actually, this depends upon the claim construction — if by “wirelessly” the Federal Circuit includes voice transmission of information, then I can see their point. However, the term “wirelessly,” as interpreted by those skilled in the art, refers to a particular technological regime used to send information over airwaves (e.g., TV, radio, bluetooth, whatever …). This is in no way, shape, or form an abstract idea. This is technology, and anybody saying otherwise, if they have an engineering degree, should have their engineering degree revoked.

The Federal Circuit also employed their prior jurisprudence, in step 2B, that looks beyond the alleged abstract idea, to see if the additional elements provide an inventive concept. In this instance, since the supposed inventive concept was the wireless communicating status information, there was nothing left to find an inventive concept because everything else was supposedly conventional. However, we are taking the Federal Circuit on their word that the inventive concept was merely wireless communicating status information. With a priority date of May 29, 2003, I find it hard to believe that such an invention would not be considered obvious. As such, there is probably something more to the invention that the Federal Circuit is glossing over. That being said, the Federal Circuit’s main error is finding that wireless transmitting information is directed to an abstract idea.

If there is a case that would be a decent candidate to take to the Supreme Court, the Chamberlain case would be one. It is one thing to say that the financial services inventions within Bilski and Alice are directed, but it is another thing altogether to argue that a garage door is directed to an abstract idea.
Lost In Norway
September 10, 2019 03:52 am
Thank you for the article. It is terrifying to me that they moved the question of patentability from 2B to 2A.
Concerned
September 9, 2019 09:38 pm
Received today the examiner’s response to our PTAB appeal. Every argument advanced by the examiner is prefaced by the term “abstract idea.”

The examiner has provided no evidence or court case where the tracking of the parent of an adult is a long standing practice in commence in my field or any field. The tracking of a parent of an adult cannot be said to be “abstract” as a matter of law, there is no proof that it has ever occurred in my field or any other field. It is not routine, well understood or conventional anywhere on Earth.

The examiner seems to intentionally leave out of his argument the basis why the inventive concept is abstract, only assumes as much, and then advances all his abstract “type” arguments.

Nor is there any explanation of how inferior data using a generic computer could solve a problem beyond the reach of working professionals and experts using superior data and a dedicated network since 1956. Of course an inventive step is present, it is self evident from the significant post process activity that renders a solution.
Carl Whitaker
September 9, 2019 07:53 pm
I love these side shows, FACT IS THERE WILL BE NO REFORM AND FAANG IS WORKING ON A NEW BACK DOOR TO AVOID PAYING PATENT HOLDERS. AMERICA’S PATENT SYSTEM IS FINISHED. MS. LEE AND THE AIA ACTs PTAB ALICE/MAYO/EBAY/TC-HEARTLAND/OIL CASE HAVE SEALED THE DEATH OF PATENTS IN AMERICA. ASIA AND EUROPE ARE THE NEW LANDS OF MILK AND HONEY FOR NEW INVENTORS. AMERICA HAS KILLED THEM SELVES BY PROTECTING FAANG THEFT OF IPs THAT DO NOT PROTECTION AND ARE OVERLY OBESE WITH WEALTH, THAT NEED TO BE SLIMMED DOWN.
Pro Say
September 9, 2019 06:08 pm
Only Congress can end this scourge of American innovation.

Only Congress.
Appearance of …
September 9, 2019 05:58 pm
“Something more” is undefined.
“Abstract” is undefined

How to find a patent to be “abstract”:

1) Be in a position of authority over the patent
2) Start ignoring claim limitations
3) Continue step 2 until you (as the authority figure) decide it is now abstract