It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes

By Yvonne Morris
September 3, 2021

“If you can show that the networking hardware either presents novel features or is improved by the invention to become a more effective tool, you may overcome a Section 101 rejection.”

Technologies such as computer networking, which, unlike software inventions, typically incorporate at least some hardware elements, may be less vulnerable to rejection under the U.S. Supreme Court’s decision in Alice v. CLS Bank. However, responding to these rejections when they are issued still requires some finesse. In these cases, rejections usually revolve around whether the hardware included in the claims serves as an improvement over existing hardware or is merely used as a tool for a mental process or other abstract idea. If the examiner concludes that the networking hardware merely serves as a tool, the claims usually fail the Alice/Mayo test. However, if you can show that the networking hardware either presents novel features or is improved by the invention to become a more effective tool, you may overcome the rejection.

Below are three examples of how applicants successfully overcame 101 rejections in the computer networking domain.

Technological Improvements to Hardware Almost Always Overcome Section 101 Rejections

In U.S. Patent Application Serial No. 16/132,933 (now U.S. Patent No. 10,938,664), the examiner, Douglas B. Blair, rejected the claims under Section 101 on the ground that the claims recited an abstract idea without significantly more. According to the examiner, the claims recited a series of mathematical steps that operate on network performance data without tying those operations to a practical application.

In response to the rejection, the applicant argued that the invention improved network technology and, as a result, qualified as patent-eligible subject matter.

Specifically, the applicant argued:

“[The claims] also constitute an improvement in computer network technology. Claim 1 recites, in part, calculating network frequency distributions of a performance measurement in a network, calculating entity frequency distributions of the performance measurement for different groupings of network entities, and identifying an outlier among the groupings of network identities by calculating a change in distance measurements between the network frequency distributions and the entity frequency distributions over different time periods.”

By filtering outliers, the invention only presents the most critical information to the network administrator to identify real network performance issues rather than noise.

In the next action, the examiner withdrew the 101 rejection.

The takeaway from this case is that even with networking hardware, you may need to argue that the invention improves computer network technology. Whether this improvement comes through a new feature or better functionality, you will need to point to specific claimed steps as providing the technological improvement.

A Practical Solution Provided by the Claimed Invention Can Provide a Path to Allowance

U.S. Patent Application Serial No. 15/859,448 (now U.S. Patent No. 10,735,346) claims a method for optimizing a data payload for a device within an Internet-of-Things (IoT). The examiner, Oleg Survillo, issued a rejection for patent-ineligible subject matter under Section 101. The rejection asserted that the invention merely recited a mental process for prioritizing data.

In this case, the examiner raised the point that the underlying concept of prioritization existed long before computers. As such, the prioritization process could occur entirely inside the human brain.

In response, the applicant brought the examiner’s attention back to the claimed device and away from the underlying concept. The claims were amended to include specific limitations describing the device and the prioritization process. Even though the concept of prioritization may have existed before, the implementation of this prioritization process in an IoT device had not.

In particular, the applicant argued:

“The present claims are directed to IoT devices and techniques for transmitting data in a network of IoT devices. … Many IoT devices are battery powered and tend to have limited processing resources. Additionally, a typical IoT network may include a large number of IoT devices. Accordingly, energy efficiency and network capacity usage are of greater concern in IoT networks compared to other types of computer networks. The present claims recite techniques that improve energy efficiency and network capacity usage in IoT networks.”

The examiner allowed the claims after this response.

The takeaway from this case is that even if the concept underlying the invention is old, you can explain how the claimed invention provides a practical solution to a new problem. This argument will ground the invention as a real concept with practical effects rather than an abstract idea.

Proof of Improved Functionality Can Turn the Abstract Idea into Patent Eligible Concept

The U.S. Patent Application Serial No. 14/838,572 (now U.S. Patent No. 11,005,963) claims a pre-fetch cache population for WAN optimization. The examiner, Christopher Cadorna, rejected the claims under Section 101 on the ground that the claims were “directed to a judicial exception (i.e., an abstract idea) without significantly more.

The applicant relied upon the landmark judgment in Enfish, LLC v. Microsoft Corp. in crafting a response to the rejection. It was argued that the claims are similar to the claims of Enfish in that they use a specific technique to improve the way computers transmit and receive data across a wide area network.

In this particular case, the applicant was able to show that preloading the WAN optimizer results in an increase in the performance of the network, which convinced the examiner to withdraw his previous rejection.

The particular improvement was described as:

“For example, host 104 can begin sending data to WAN optimizer 125 prior to the scheduled VM migration so that WAN optimizer 125 has at least partially pre-loaded data cache for deduplication when VM migration is triggered. As such, deduplication will be more efficient at the start of the VM migration. … Other examples of the types of pre-loaded data that may benefit from WAN optimizations may include data-level pre-loading (such as VM migration, scheduled backup, disaster recovery machine state synchronization) or application-level caching (such as found in Active Directory® user synchronization, database replication etc.)”

The applicant also amended the claims in support of his arguments to focus the claims to a specific improvement in computer technology. The examiner agreed with the arguments of the applicant and withdrew the rejections under Section 101.

The takeaway from this case is that if you can provide proof of improved functionality of the network, it can render the abstract idea as a patent-eligible concept.

Hardware Details are Key

Whereas the basic framework for responding to a rejection under Alice remains the same, certain art units may lend themselves to distinct approaches due both to the nature of claimed inventions within those arts and specific examiner preferences and conventions. Indeed, many seasoned attorneys have noted the importance of utilizing examiner interviews or other research to learn just how subject matter eligibility issues are interpreted within the assigned art unit as early in the prosecution process as possible.

In the case of inventions falling within the computer networking domain, these three office actions show that focusing on hardware can be critically important to overcome a 101 rejection. These hardware details can focus on the problem the invention solves, the implementation of the invention or the technological improvements provided.

 

Image rights acquired by AdobeStock 

The Author

Yvonne Morris

Yvonne Morris is cofounder and CEO of IP Toolworks, a company founded with the goal of helping attorneys respond to rejections from the USPTO more effectively by leveraging a wealth of publicly available but previously inaccessible information. Yvonne holds a Ph.D. in the history and philosophy of science. Her scholarly research has encompassed the complexities of knowledge disputes within eighteenth and nineteenth-century periodical literature and scientific correspondence, a topic she believes has special resonance with the patent prosecution process today.

For more information or to contact Yvonne, please visit her 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments. Join the discussion.

  1. Concerned September 3, 2021 3:48 pm

    The application of this section of law is so arbitrarily that the solutions in this article work one day and not the next day. Absolutely no consistency, however, what do we expect when the law was altered with undefined words?

    Improve the network? My examiner admitted the process solved the problem, which concedes the solution is finding errors and omissions that were invisible to said computer network.

    Their PTAB said the process meets the law as passed by Congress, but not the definition of court cases. Exactly what undefined definition is PTAB talking about?

    And, of course, the rationale for rejections in my prosecution change like the wind. PTAB threw out the examiners’ (plural) rejections and inserted their bland new rejection. Theiere is no concensus on a rejection, just reject.

    So we may pretend there is a magic approach to solve the s101 problem. It is not happening until judges stop adding undefined words and thinking they are Congress.

    If s101 was so bad beforehand, the judges should have petitioned Congress to fix the alleged mess, not screwed over inventors who are the victims of legislation from the bench.

  2. Pro Say September 3, 2021 4:22 pm

    Thanks Yvonne.

    Valuable to see “in the trenches” real-world examples of what actually DID work to traverse the unconstitutional Alice / Mayo.

    More useful than many folks theory’s of what approaches SHOULD or MAY work.

    Please keep those examples coming.

  3. Anon September 4, 2021 9:41 am

    I hesitate to endorse the approach as outlined in this article, as hewing to a lowest common denominator of “what has worked” instead of pushing back — and pushing back hard — against the surreal-ality of the Judicial Branch will only empower that Branch to continue along their path.

    Such is a form of capitalization, a “small piece in our time” that does NOT guarantee (patent) Peace in any timeframe.

  4. Curious September 4, 2021 8:43 pm

    In the case of inventions falling within the computer networking domain, these three office actions show that focusing on hardware can be critically important to overcome a 101 rejection.
    Not to put a big damper on things, but I would expect most patent attorneys to be able to overcome a 101 rejection in Tech Center 2400.

    I would appreciate hearing words of wisdom on overcoming 101 rejections when one has the misfortune of having an application classified in TC 3600.

    All that being said, my guess is that the wrong panel (bearing in mind that most of them area the “wrong” panel) would invalidate 10,938,664. The specification reads “The techniques herein introduce a mechanism to identify and rank groupings of one or more network entities in a monitored network that have suddenly changed their baseline behavior, enough to have an impact on the optimal operation of the network.” Sounds like a mental process to me — (not my opinion — I’m just channeling the Federal Circuit).

    U.S. Patent No. 10,735,346 involves “data prioritization for heterogeneous edge and fog payloads using dynamic judicious weighting.” Sounds like another mental process to me — (again, not my opinion — I’m just channeling the Federal Circuit).

    U.S. Patent No. 11,005,963 might prove a little more difficult. However, if I’m channeling the Federal Circuit, I’ll declare that ‘performing optimization on the application packets using the pre-loaded initialization data’ is directed to the abstract idea of performing an optimization algorithm that could be performed mentally. I know — it doesn’t make sense. However, when I’m channeling the Federal Circuit, “making sense” is not a constraint I need to worry about.

  5. MaxDrei September 5, 2021 4:54 am

    Since 1978, the requirement for patentability under the European Patent Convention has been an invention that is a solution to a problem in technology, with performance of a non-obviousness enquiry to match that problem, that invention being carried into effect by a combination of technical features, which combination is exactly what is set forth in the claim under consideration. As ever, the name of the game is the claim.

    Looking in from Europe, it is fascinating to see the USA assymptotically arriving at a boundary between what’s patentable and what isn’t, which boundary is more or less the established European boundary.

    It remains, for patent attorneys in the USA to reflect on that reality, and then to draft their patent applications accordingly.

  6. Anon September 7, 2021 11:57 am

    MaxDrei, that “reality” is exactly the type of thing to be pushed back against.

    Us, “in the USA” should reflect and understand how we are different from Europe and why we should not so blandly accept the “mere technical” approach that you would hew to.

  7. Curious September 7, 2021 5:55 pm

    Looking in from Europe, it is fascinating to see the USA assymptotically arriving at a boundary between what’s patentable and what isn’t, which boundary is more or less the established European boundary.
    Mad Max — pushing the same Euro-centric BS that everyone has been ignoring for at least a decade. If you think that the boundary between what is patentable and what isn’t is more or less than the established European boundary, then you have NO CLUE as to what the boundary is. Then again, you aren’t in exclusive company — no one does. The boundary is unknowable since there is no boundary. One would have better luck finding meaning in Jackson Pollock’s artwork than in finding meaning in the Federal Circuit jurisprudence regarding 35 USC 101 — just the way the Googles and Facebooks (i.e., the efficient infringement coalition) of the world wants.

  8. Primary Examiner September 8, 2021 9:46 am

    @4
    “I would appreciate hearing words of wisdom on overcoming 101 rejections when one has the misfortune of having an application classified in TC 3600.”
    My words of wisdom: Per the MPEP, in regards to Step2A and Step2B: “An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.”

  9. Curious September 8, 2021 1:44 pm

    My words of wisdom: Per the MPEP, in regards to Step2A and Step2B: “An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.”
    Except is has been my experience that most Examiners in TC3600 believe that the only additional elements in the claims are a “computer” or “processor” or something explicitly recited-hardware — contrary to the USPTO’s own guidance documents. This problem impacts both Step 2A and Step 2B.

    When your application is in TC3600, odds are pretty good that there is something in the claim that an Examiner can argue recites an abstract idea. However, the problem is that they declare just about EVERYTHING in the claim recites the abstract idea — even if only a small portion of the claims does.

    If TC3600 followed the USPTO’s own guidance, I wouldn’t have a problem. However, they don’t.

    Also, an “improvement” is just one of the many things listed in the 2019 Patent Eligibility Guidelines that can be the basis for a finding that the claim integrates the abstract idea into something more. As such, this finding (of improvement) is not necessary to get past Prong Two of Revised Step 2A.

  10. Anon September 8, 2021 2:00 pm

    Primary Examiner,

    Please define: “other technology.”

    Clearly, it is NOT a requirement for an improvement to be to the computer qua computer, and yet, that seems to be the only thing that (many) examiners want to accept.

    By the way, “other technology” is in fact extremely broad. The quick Google definition is: “the application of scientific knowledge for practical purposes, especially in industry.

    As you are (or should be) aware, Deming’s methodology (touching upon nigh all business methods) fits the definition of applied scientific knowledge for practical purposes.

  11. Night Writer September 8, 2021 4:45 pm

    @8 Primary Examiner

    You see that is the problem. 101 at the PTO is completely discretionary. The examiners can do pretty much whatever they want and the case law is so inconsistent that you can find a case to say pretty much anything you want.

    Lourie pretty much did all of this. 100% responsible. Some old man that couldn’t explain the Church-Turing Thesis if his life depended on it, and he determined eligibility for all information processing invention. Welcome to the third-world country of the USA where judges are picked by corporations and judges get off writing the laws in their judicial opinions rather than applying the law. I am sure that Lourie feels powerful and vindicated for his 101 jurisprudence but at the end of the day all he did was cost the USA untold billions in dealing with his judge made law.

    The real issue is to PE is how to not get put in a 3600 TU. Everyone knows that is the real trick and to do anything humanly possible to stay out of 36xx where the examiners smirk at you and laughingly tell you to file an RCE for their points knowing that there is not a snowball’s chance in hxll that they will ever withdraw the 101 rejection.

  12. B September 8, 2021 5:24 pm

    This is a well-organized and thought out article

    However, Alice-Mayo is a completely capricious exercise in nonsense.

    @ Primary Examiner “My words of wisdom: Per the MPEP, in regards to Step2A and Step2B: ‘An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.’”

    Electric Power Group says you’re wrong, there was no “technical improvement” made in DDR Holdings, and Flook was all about a technical improvement.

    I appreciate your sticking to the party line and I mean no insult.

    My point is that the Alice-Mayo test is PURE GARBAGE and anyone – examiner, APJ, judge, or justice – who says they know what an “inventive concept” is is a liar.

    I’ve literally asked over 100 examiners what they thought an “inventive concept” is. None claimed that they knew.

    Also, anyone who asserts that a claim that passes 102 and 103 and yet is “abstract” as a whole within the meaning of Alice Corp. (not Reyna’s nonsense Ariosa decision) is an idiot by definition.

    @ MaxDrei

    MaxDrei, I respectfully disagree as the EU actually has an objective standard, and we in the U.S. have a different set of statutes setting a different standard that (unfortunately) our courts have dumped for capricious lunacy

    @ Concerned, Night, and Anon

    Concerned, I’ll call you Friday.

    New CAFC opinion – In re Elbaum is disturbing – and Night and Anon should also look it up. It’s a per curiam decision that (along with In re Bhagat) tells me that the CAFC treats pro se litigants like toilet tissue. The opinion was obviously written by the most hapless 1L summer intern in the court, and if any of the judges (Newman, Moore, and O’Malley) actually read the thing I’d be surprised.

  13. B September 8, 2021 5:35 pm

    @ Anon “Clearly, it is NOT a requirement for an improvement to be to the computer qua computer, and yet, that seems to be the only thing that (many) examiners want to accept.”

    100% correct – and let’s not forget that s101 doesn’t require an “improvement.”

    @ Night Writer “You see that is the problem. 101 at the PTO is completely discretionary. The examiners can do pretty much whatever they want and the case law is so inconsistent that you can find a case to say pretty much anything you want.”

    Try finding a CAFC decision overturning an Alice-Mayo rejection coming from the USPTO. Examiners don’t even need case law. They just need to say “Rejected under Alice-Mayo because I have no real arguments or evidence and I don’t really need to bother with any law,” and the CAFC will affirm 100% of the time

  14. Primary Examiner September 9, 2021 10:12 am

    @9
    “Except is has been my experience that most Examiners in TC3600 believe that the only additional elements in the claims are a “computer” or “processor” or something explicitly recited-hardware — contrary to the USPTO’s own guidance documents. This problem impacts both Step 2A and Step 2B.”
    If your Examiner only considers your computer/processor as an additional element, and omits any other claimed features that do not recite an abstract idea (does not consider them as additional elements), then this would be wrong on the part of the Examiner.

    “Also, an “improvement” is just one of the many things listed in the 2019 Patent Eligibility Guidelines that can be the basis for a finding that the claim integrates the abstract idea into something more. As such, this finding (of improvement) is not necessary to get past Prong Two of Revised Step 2A.”
    The improvement is an “exemplary consideration”, and such a finding would give the Examiner sufficient necessary proof – in the context of Step2A/2B.

    @10
    MPEP 2106.05A provides several references to several technical fields/technological environments.

    @11
    I agree that 101 can be pretty subjective and discretionary, and I regret this. However, I do find, from my own experience, that overcoming a 101 rejection (in 3600) can be done. I strongly advise you to discuss your claimed invention, and the solution that it provides, with your Examiner, and even with the Examiner’s SPE. Interviews are sometimes underrated. I wish you good luck with your applications.

  15. Anon September 9, 2021 11:25 am

    Primary Examiner – I did not ask for MPEP examples.

    I asked for a definition.

    You should know the difference.

    Try again.

  16. Night Writer September 10, 2021 7:32 am

    @B

    You are probably one of the few that can appreciate this. Re-read Ultramercial the Lourie version and the Rader version. The entire 101 mess will be laid before you eyes. Lourie could have just dismissed Alice and said that the claims were not directed to a well-known economic principle or another principle and it would have been the end of Alice.

    Also note if you read what Lourie wrote that it presents the seeds of Williamson. Lourie should go down in infamy for one of the worst opinions in the history of patent law right up there with Benson.

    And yet we know that information processing is a physical process and we know that each claim to one skilled in the art is not abstract but describes a set of solutions.

  17. B September 10, 2021 11:11 am

    @ Night Writer “Re-read Ultramercial the Lourie version and the Rader version. The entire 101 mess will be laid before you eyes. Lourie could have just dismissed Alice and said that the claims were not directed to a well-known economic principle or another principle and it would have been the end of Alice.”

    I will definitely do so, with thanks.

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