First Action Interview (FAI) Pilot Program Usage Remains Low

By Tia Brand

Since its inception in 2008, the First Action Interview (FAI) Pilot Program has been hailed as an efficiency booster, increasing face time with examiners and potentially decreasing the number of office actions per application.  Numerous articles, blog posts and the USPTO itself have maintained that the program increases the rate of first action allowance, boosts total rates of allowance over a 5-year period from the filing date, and decreases total prosecution time compared to applications which do not take advantage of the FAI program.  All these things logically translate to decreased prosecution costs and happier clients, so why do few applicants take advantage of this fee-free program?

Despite a drastic decrease in 2013 and the subtler usage decrease in 2018, FAI program usage has trended up during the past 10 years, with the 510 total FAI requests filed in 2008 more than doubling to over 1100 FAI requests in 2018.  However, this is still a small percentage of the nearly 300,000 original utility applications filed in the US each year.

The First Action Interview program has been available to all art units since the Full Pilot Program was introduced in 2011, yet there are some tech areas, most notably Biotechnology & Organic (1600) and Chemical and Materials Engineering (1700), where the FAI program is hardly being used at all.  Upon implementation of the Full Pilot Program in 2011, all technology centers saw an uptick in FAI filings, led by Computer Networks, Multiplex, Cable and Cryptography/Security (2400) and Communications (2600).  However, in 2013 Mechanical Engineering (3700) was the only tech center with over 100 FAI requests.  It would be interesting to review changes in patent law during calendar years 2012-2013 to determine the cause of this drastic decrease in FAI requests across all technologies.

After the decline in 2013, FAI filings tended to increase for every technology area through 2016, with Computer Networks, Multiplex, Cable and Cryptography/Security (2400) and Communications (2600) again seeing the most impressive number of FAI filings.  In 2016, Chemical and Materials Engineering (1700) and Biotechnology & Organic remained the tech areas with lowest FAI program usage.  In recent years, Computer Networks, Multiplex, Cable and Cryptography/Security (2400) has continued to dominate FAI usage, with Communications (2600) dropping to near the bottom of the pack and all other areas maintaining, at best, modest FAI Program usage.

Despite promising reports on benefits of the First Action Interview (FAI) Pilot Program, most applicants, especially those in the Chemical and Biological fields, are not taking advantage of the tool 10 years after its original introduction to the public.  The reason for this may simply be due to lack of knowledge surrounding the First Action Interview process or total unfamiliarity with the existence of the program.  Moving forward, applicants should consider using the FAI Pilot Program in order to decrease prosecution time and costs.  Detailed information regarding filing requirements for FAI requests can be found in the USPTO Official Gazette.

USPTO October 2019 Update On Subject Matter Eligibility

By Tim Hirzel

The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts.  Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update.  Below, we discuss the updates and how practitioners can use the updated guidance in practice.

Step 2A Prong One

In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).

However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea.  The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea.  The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).

The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.

  • Mathematical Concepts – The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The PTO interprets the courts as having declined to distinguish between types of math when evaluating claims for eligibility, and the PTO will do the same.  For example, math used to solve a particular technical problem (e.g., an engineering problem) will still be considered to fall within the mathematical concepts grouping.  However, a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
  • Certain Method of Organizing Human Activity – The PTO clarifies that not all methods of organizing human activity are abstract ideas, and this grouping is limited to only fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.
  • Mental Processes – Under the 2019 PEG, “mental processes” are concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. A footnote in the 2019 PEG indicates that a claim limitation is not a mental process when it “cannot practically be performed in the mind.”  The October 2019 update expanded on this and clarified that this is “when the human mind is not equipped to perform the claim limitations.”  The PTO reemphasized that claims can recite a mental process even if they are performed by a computer in the claim and further clarified that there is no requirement that the claim be performed entirely in the human mind to fall into the mental processes grouping.

The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval.  The October 2019 update indicates that the public will be notified once such an office action issues.  At this time, the PTO has not provided any such notification.

Step 2A Prong Two

In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea.  Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application.  However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.

The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.

  • Step One – Examiners are to evaluate the specification to determine if sufficient details are provided to establish the claimed invention provides an improvement to technology. However, there is no requirement that the specification explicitly recite the improvement.  The improvement is not relative to what is well-understood, routine, conventional activity in the field, but rather relative to existing technology.  Importantly, the PTO noted that an improvement to an abstract idea is not an improvement to technology.
  • Step Two – If the specification sets forth an improvement in technology, the claims must be analyzed to determine if the claims recite features that provide the improvement described in the specification. However, there is no need for the claims to explicitly recite the improvement.

Step 2B

In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A.  However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B.  Such an example was notably absent from the examples provided with the 2019 PEG.

Example 43 is a hypothetical based on the well-known Diamond v. Diehr case.  Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion.  Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple).  Under Step 2A Prong One, the claim is determined to recite a mathematical concept.  Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application.  Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine).  Thus, claim 3 is determined to be directed to the abstract idea.

However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known.  The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses.  Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.

Key Takeaways

The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem.  In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology.  This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.

Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided.  The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement.  Importantly, the claims should be drafted in such way to include the features that provide the improvement.  Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight.  The October 2019 update makes it clear this is not necessary.

The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One.  Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas.  For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind.  However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation.  Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.

The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two.  While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given.  Given this, examiners have been reluctant to seriously consider Step 2B arguments.  Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward.  Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.

Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.

Eli Mazour Harrity Team

Why the Revised 101 Guidance Continues to be Important After Cleveland Clinic

By Eli Mazour

After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied.  As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application.  To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”

In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019).  The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.

Director Iancu’s comments regarding Cleveland Clinic

This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns.  First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance.  Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director.  Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls.  In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions.  Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.

Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically.  And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit.  In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.

Practical tips for drafting & prosecution

As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis.  In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges.  Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.

However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility.  Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind.  The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.

Harrity Blog

In-depth Summary of USPTO Revised Guidance on Subject Matter Eligibility

By Tim Hirzel

The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019.[1]  Below, we discuss the changes to the subject matter eligibility analysis made by the revised guidance and how Applicants may address these changes in practice.

Summary of Revised Guidance

The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A.  Previously, the PTO guidelines (wrongly) equated a claim merely “reciting” an abstract idea with a claim being “directed to” the abstract idea under Step 2A.  The PTO has replaced this approach with a new two prong analysis.

In the first prong of Step 2A, Examiners evaluate whether a claim recites an abstract idea.  The first prong is similar to the previous approach with one important change.  Previously, Examiners were to describe the subject matter claimed and identify whether the subject matter had previously been found to be directed to an abstract idea by the courts.  The PTO found this approach impractical due to the ever-increasing number of court decisions and rightly noted that it has been difficult for Examiners to apply this approach in a predictable manner, especially between different technology centers.

Instead of this case law specific approach, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.  Examiners must now a) identify specific limitations in the claims believed to be an abstract idea, and b) determine whether the identified limitations fall within any of the three newly identified groups.  If the identified limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.

In the second prong of Step 2A, Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application.  The million-dollar question then becomes what is a practical application?  The PTO broadly answers this question by stating “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.”  The PTO also gives several examples based on case law that indicate an additional element or combination of elements may have integrated an exception into a practical application, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The PTO acknowledges that these examples and the second prong of step 2A overlap considerations that the courts and the PTO’s guidance consider under Step 2B but feels that this new approach will increase certainty and reliability.  For clarity, the PTO reiterated that merely using a computer as a tool to perform the abstract idea, adding insignificant extra-solution activity, or generally linking the abstract idea to a technical field will still not be enough to establish a practical application and patent eligibility.  If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.

Step 2B has not been changed under the revised guidance and Examiners are still to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  However, the incorporation of several Step 2B considerations into the second prong of Step 2A limits how much additional analysis the Examiner needs to apply in Step 2B.  Importantly, whether the additional elements are well-understood, routine, conventional activity is not evaluated under the second prong of Step 2A and is unrelated to whether the claim integrates the abstract idea into a practical application.  This evaluation is still done in Step 2B pursuant to the Berkheimer memo[2] to determine whether the additional element or combination of elements adds limitations that are not well-understood, routine, conventional activity in the field which is indicative that an inventive concept may be present.

Our Impressions

The new two prong approach to Step 2A should make it easier to work with Examiners, especially during interviews, to overcome 101 rejections.  Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea.  This made it very easy for Examiners to establish the claims were directed to an abstract idea without much analysis.  The revised guidelines will make it much more difficult for the Examiner to simply dismiss an Applicant’s Step 2A arguments.

Equally as frustrating was Examiners misapplying case law when attempting to identify a decision that found subject matter, similar to the claims, to be directed to an abstract idea.  Applicants should be able to avoid the necessity of debating case law cited by Examiners (which was rarely an effective manner of overcoming a 101 rejection anyway) because the Examiners are not required to cite specific decisions in their rejections anymore and merely must identify one of the three newly defined groups of abstract ideas.

Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A.  While the examples of practical applications given in the revised guidelines are nothing new and come straight from case law Applicants should have already been using to overcome 101 rejections, the examples were not always given much weight by the Examiners or simply dismissed nominally in Step 2B.  The revised guidelines’ focus on the “practical application” consideration and the given examples may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).

Moreover, the PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past.  For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter.  However, Applicants must be mindful that the goal is not simply to get patent applications allowed by satisfying the PTO’s revised guidelines, but to have claims that are statutory as supported by case law and that can withstand the 101 analysis performed by the courts.

Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance.  Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.

[1] 2019 Revised Patent Subject Matter Eligibility Guidance

[2] Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc.

For a shorter summary of the above, visit here.

Tariq Hafiz – Clause 8 – Episode 7

A must-listen episode of Clause 8 for anyone interested in patent prosecution.  Eli Mazour talks to Tariq Hafiz – USPTO Director of Technology Center 3600 Business Methods – about his career at the USPTO, soon to be released 101 guidance, overlooked strategies for effectively dealing with examiners and their Supervisors, and many other subjects. 

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Harrity Blog

Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

By Sean Quinn & Peter Glaser

August 25, 2017- In Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. Aug. 15, 2017), a divided panel at the Federal Circuit determined that U.S. Patent No. 5,953,740 is not directed to an abstract idea.

The decision provides a positive result in the context of software-based inventions, and provides a few insights regarding potential patent drafting strategies.  Namely, the decision highlights the importance of focusing the specification on improvements to hardware components, and bolsters the importance of mentioning technical benefits wherever appropriate.  

The ‘740 patent teaches a memory system having programmable operational characteristics that are capable of being configured for use with multiple different types of processors without causing a reduction in performance ostensibly present in the prior art computer systems.  This enables the memory system to be used efficiently with multiple types of processors, rather than only with a single type of processor.  Further, the ‘740 patent claims a computer memory system comprising a main memory, a cache, and programmable operational characteristics that determine a type of data stored by the cache.

On appeal from a district court’s grant of NVIDIA’s motion to dismiss based on the asserted claims being directed to patent -ineligible subject matter, Judge Stoll, writing for the majority, stated that “[courts] must articulate with specificity what the claims are directed to (citing Thales Visionix Inc. v. United States),” and “ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea (citing Enfish LLC v. Microsoft).”  (Opinion at 7).

Using Enfish and Thales as guidance, the majority stated that the ‘740 patent’s claims are directed to an improved computer memory system rather than to an abstract idea of categorical data storage and  mentioned that claim 1 of the ‘740 patent requires a memory system “having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor,” and “determin[ing] a type of data stored by said cache.”  (Opinion at 9).  Further, the  majority stated that dependent claims 2 and 3, respectively, narrow the memory system’s programmable operational characteristic to storing certain types of data and buffering data from certain sources and that none of the claims recite all types and all forms of categorical data storage.

The majority noted that the ‘740 patent’s specification mentions various technical benefits associated with the memory system, such as permitting different types of processors to be installed with the subject memory system without significantly compromising their individual performance, obviating the need to design a separate memory system for each type of processor, avoiding the performance problems of prior art memory systems, enabling interoperability with multiple different processors, and outperforming prior art memory systems having larger cache sizes.

Analogizing the ‘740 patent to the self-referential table in Enfish and the motion tracking system in Thales, the majority noted that the ‘740 patent’s claims are directed to a technological improvement and focus on a specific asserted improvement in computer capabilities rather than a process that qualifies as an abstract idea for which computers are invoked merely as a tool.  Further, the majority noted that the specification of the ‘740 patent discusses the advantages offered by the proffered technological improvement.  

Juxtaposing the ‘740 patent and the claims in Content Extraction & Transmission LLC v. Wells Fargo Bank and In re TLI Communications LLC Patent Litigation, the majority noted that the ‘740 patent recites an ostensibly new, improved, and more efficient memory system as opposed to claims that are not directed to an improvement in computer functionality and cover abstract ideas operating on generic hardware.

In dissent, Justice Hughes posited that the ‘740 patent fails to describe how the invention’s purpose is achieved, fails to describe how to implement the programmable operational characteristic, requires a third party to supply the innovative programming, and, as such, is not properly described as being directed to an improvement in computer systems.

In response, the majority identified three flaws with Justice Hughes’s posit.  

First, the majority noted that the ‘740 patent includes an appendix having 263 frames of code, and noted that the assumption that the code does not teach a person of ordinary skill in the art was improper at the stage of reviewing a Rule 12(b)(6) motion, where all factual inferences must be drawn in favor of the non-moving party.

Second, the majority noted that the question of whether a patent specification teaches a person of ordinary skill in the art how to implement the claimed invention presents an enablement issue under 35 U.S.C. § 112 rather than an eligibility issue under § 101.  Further, the majority noted that the implementation details regarding how to configure a programmable operational characteristic may very well fall within the routine knowledge of persons having ordinary skill in the art and, as such, may have been permissibly omitted.  

Third, the majority noted that Justice Hughes’s assumption that the innovative effort in the ‘740 patent lies in the programming required for a computer to configure a programmable operational characteristic of a cache memory was misplaced.  In support, the majority noted that the assumption was inconsistent with the ‘740 patent’s specification and claims, which expressly state that the improved memory system is achieved by configuring a programmable operational characteristics of a cache memory based on the type of processor connected to the memory system.

In closing, the majority refrained from proceeding to step two of the Alice test because of the finding that the claims of the ‘740 patent are not directed to an abstract idea.   

Going forward, the decision provides some instruction regarding potential patent drafting and prosecution strategies regarding software-based inventions and § 101 issues.  For example, the decision highlights the importance of directing the specification and claims to improvements in computer systems, and the importance of mentioning technical benefits provided by the invention wherever feasible.  Moreover, the case highlights a distinction that can be drawn between enablement and eligibility.

Download Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

 

Harrity Blog

Analysis of December 2016 USPTO Subject Matter Eligibility Examples

By Kris Rhu & Paul Gurzo

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims, which can be found here.  The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO.  These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice.  Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

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