Finding ways to weather the
Alice Storm while awaiting a
clearer guideline to come
By Irene Lin
April 13,2016
35 U.S.C. § 101 & Judicially created
exceptions
• Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title.
• “laws of nature, natural phenomena, and abstract
ideas.” Diehr (S. Ct. 1981)
The “Abstract Idea” Test
• BILSKI V. KAPPOS (S. CT. 2010)
– Hedging risk in commodities trading.
– Machine-or Transformation Test – not a sole test, but “a
useful and important clue, an investigative tool”
– “The concept of hedging, described in claim 1 and
reduced to a mathematical formula in claim 4, is an
unpatentable abstract idea, just like the algorithms at
issue in Benson and Flook. Allowing petitioners to patent
risk hedging would preempt use of this approach in all
fields, and would effectively grant a monopoly over an
abstract idea”
The “Abstract Idea” Test
• MAYO COLLABORATIVE SERVICES V. PROMETHEUS
LABS, INC. (S. CT. 2012)
– Drug administration process
– “to transform an unpatentable law of nature into a patent-eligible
application of such law, one must do more than simply state the
law of nature while adding the words ‘apply it.’”
– “the steps in the claimed processes (apart from the natural laws
themselves) involve well-understood, routine, conventional activity
previously engaged in by researchers in the field. At the same
time, upholding the patents would risk disproportionately tying up
the use of the underlying natural laws, inhibiting their use in the
making of further discoveries.”
The “Abstract Idea” Test
• ALICE V. CLS (S. CT. 2014)
– Mitigating settlement risk
– “system claims are no different from the method claims
in substance” as well as computer-readable
medium claims
– distinguish between patents that claim the “‘buildin[g]
block[s]’” of human ingenuity and those that integrate
the building blocks into something more, … thereby
“transform[ing]” them into a patent-eligible invention….
The “Abstract Idea” Test
• ALICE V. CLS (S. CT. 2014)
– “First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts.”
– “If so, we then ask, “[w]hat else is there in the claims before us?””
– “we consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-eligible
application. --- “a search for an “ ‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.””
The “Abstract Idea” Test
• ALICE V. CLS (S. CT. 2014)
– Step one
• “we need not labor to delimit the precise contours of the
‘abstract ideas’ category in this case.”
– Step two
• More than “apply it”
• “more than a drafting effort designed to monopolize” the
abstract idea
• More than limiting the claim to a technological environment
• A generic computer is not enough
• Consider both claim elements separately and an ordered
combination
USPTO Guidelines
• 2014 Interim Guidance on Patent Subject Matter
Eligibility(link is external)
• Nature-Based Product Examples (December 16, 2014)
• Abstract Idea Examples (January 27, 2015)
• July 2015 Update: Subject Matter Eligibility (July 30,
2015)
• July 2015 Update Appendix 1: Examples (July 30,
2015)
2014 Interim Eligibility Guidance
Establishing a Prima Facie case
• “the examiner’s burden is met by clearly articulating the
reason(s) why the claimed invention is not eligible, for
example by providing a reasoned rationale that identifies
the judicial exception recited in the claim and why it is
considered an exception, and that identifies the additional
elements in the claim (if any) and explains why they do not
amount to significantly more than the exception.” (July
2015 update)
Streamlined Eligibility Analysis
• “for a claim that may or may not recite a judicial exception but,
when viewed as a whole, clearly does not seek to tie up any
judicial exception such that others cannot practice it.” (2014
Interim Guidance)
• Example (2014 Interim Guidance):
– A complex manufactured industrial product or process that recites
meaningful limitations along with a judicial exception may sufficiently limit
its practical application.
– A robotic arm assembly having a control system that operates using
certain mathematical relationships.
Step 2A
• “a claimed concept is not identified as an abstract idea
unless it is similar to at least one concept that the courts
have identified as an abstract idea” (July 2015 update)
• Examples (2014 Interim Guidance):
– fundamental economic practices
– certain methods of organizing human activities
– an idea ‘of itself’
– mathematical relationships/formulas.
(July 2015 update)
(July 2015 update)
Step 2B
• Example of limitations that may be enough to qualify as
“significantly more”:
–
–
–
–
Improvements to another technology or technical field
Improvements to the functioning of the computer itself
Applying the judicial exception with, or by use of, a particular machine
Effecting a transformation or reduction of a particular article to a different
state or thing
– Adding a specific limitation other than what is well-understood, routine and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application
– Other meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. (2014 Interim
Guidance)
Step 2B
• Example of limitations that were found not to be enough to
qualify as “significantly more”
– Adding the words ‘‘apply it’’ (or an equivalent) with the judicial exception,
or mere instructions to implement an abstract idea on a computer
– Simply appending well-understood routine and conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception, e.g., a claim to an abstract idea requiring no more
than a generic computer to perform generic computer functions that are
well- understood, routine and conventional activities previously known to
the industry
– Adding insignificant extrasolution activity to the judicial exception
– Generally linking the use of the judicial exception to a particular
technological environment or field of use (2014 Interim Guidance)
Step 2B
• Computer functions to be considered as well‐understood,
routine, and conventional functions when they are claimed
in a merely generic manner:
– performing repetitive calculations
– receiving, processing, and storing data
– electronically scanning or extracting data from a physical
document
– electronic recordkeeping
– automating mental tasks
– receiving or transmitting data over a network, e.g., using the
Internet to gather data. (July 2015 update)
Step 2B
• The additional elements should be considered both
individually and as an ordered combination.
• Individual elements when viewed on their own may not
appear to add significantly more, but when viewed in
combination may amount to significantly more than the
exception.
Strategies In response to the 101 Rejection
1. Timing
• Delay prosecution if the case is very important
• More certainty to come for the Federal Circuit in 2016?
– McRo v. Activision Blizzard
• Clearer tests or guidelines may come in the near future
2. Resolve the prior art rejection if possible
• May help understand and establish the technical effects or
technical improvements of the claimed invention that
distinguish over “what is well-understood, routine and
conventional in the field,” which may be used in rebutting
the 101 rejection.
• Clearing the prior art rejection also would, to a certain
extent, prompt the Examiner to relatively more favorably
reconsider the 101 rejection
3. Interview with the Examiner
4. Whether the Examiner has established
a Prima Facie case
• Whether the Examiner is dealing with facts, instead of
mere conclusory statements?
• Whether the Examiner’s rejection is really addressing the
claim in context?
• Whether the Examiner has properly addressed each
dependent claim?
5. Whether the Streamlined Eligibility
Analysis is applicable
• Align the claim to the Examples given under section I.B.3. regarding the
streamlined eligibility analysis of the 2014 Interim Guidance
• Argue that the claim, when viewed as a whole, clearly does not seek to tie up
any judicial exception such that others cannot practice it.
• Make an analogy between the claim and Mackay Radio & Telegraph v. Radio
Corp. of America (An antenna system utilizing standing wave phenomena to
obtain the best directional radio propagation by a V type antenna, and a
mathematical formula to arrange the angle of the wires, their length, and the
length of the wave propagated.)
5. Whether the Streamlined Eligibility
Analysis is applicable
• Make an analogy between the claim and claim 1 of Example 26, which is
directed to an internal combustion engine including a control system to perform
some calculation
• Make an analogy between the claim and claim 15 of Example 27. “The claim’s
description of initializing a local computer system using BIOS code stored at a
remote memory location, by triggering the processor to transfer BIOS code
between two memory locations upon a powering up of the computer and
transferring control of the processor operations to that BIOS code, makes it
clear that the claim as a whole would clearly amount to significantly more than
any potential recited exception. Thus, eligibility of the claim is self‐evident in
the streamlined analysis, without needing to perform the full eligibility analysis”
• While computers operate on mathematical theory, that underlying operation
should not trigger an eligibility analysis – computers and computer operations
are not automatically subjected to an eligibility analysis.
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (1). Whether the Examiner’s alleged abstract idea is similar to the
abstract idea found by the courts?
– Contrast the seemingly similar abstract idea found by the courts to the claim.
• (2). Whether the alleged abstract idea is free of technology?
• (3). Whether the Examiner has over generalized the claims to identify an
abstract idea?
– Make an analogy between the present claim and Google v. SimpleAir, (PTAB Feb.
2015). The alleged abstract idea is “packaging and routing information as part of a
subscription service.” PTAB agrees with the patent owner that Petitioner ignores
the claim language and fails to address the actual claim limitations and sufficiently
explain how the claim recitations relate to the alleged abstract idea of packaging
and routing information as part of a subscription service and the corresponding
arguments, and also overlooked various physical components (remote devices,
central broadcast server) recited in the claim.
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (3). Whether the Examiner has over generalized the claims to identify an
abstract idea?
– Make an analogy between the present claim and Ex Parte Cyriac J. Wegman III,
(PTAB Sept. 2015). The claim is directed to providing an empirical model of a
defined space. PTAB stated that the claim at issue “not only sets forth the steps
emphasized by the Examiner, it further requires “calculating coefficients for the
hypothetical model according to an analysis of real and/or virtual objects.” In other
words, the method of claim 1 requires performing an analysis of objects, either
actual or virtual, and calculating coefficients for the model based upon that analysis.
We find that these steps are sufficiently concrete as to set them outside the broad
definition of abstract idea as set forth in Alice.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (3). Whether the Examiner has over generalized the claims to identify an
abstract idea?
– Make an analogy between the present claim and Google v. ContentGuard Holdings,
(PTAB Jun. 24 2015). PTAB stated “Google’s arguments that the challenged claims
of the ’280 patent are directed to a patent-ineligible abstract idea are predicated on
the notion that they recite a fundamental economic or longstanding commercial
practice. Contrary to Google’s arguments, the challenged claims are not directed
merely to “providing consumers with rights to an item, such as a movie or book,”
nor can the features recited in the challenged claims be stripped away so that these
claims simply are directed to a traditional approach or method of licensing or sublicensing content. Indeed, the challenged claims require much more… we agree
with ContentGuard that these claims do not recite merely a fundamental economic
or longstanding commercial practice, but instead are directed to a particular way of
creating and enforcing rights associated with digital works that is “necessarily
rooted in computer technology” and “specifically arises in the realm of computer
networks.””
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (3). Whether the Examiner has over generalized the claims to identify an
abstract idea?
– Make an analogy between the present claim and JP Morgan Chase v. Maxim
(PTAB Feb. 20, 2015). The alleged abstract idea is secure data transfer. PTAB
stated “Petitioner’s analogies to alleged historical examples of secure transfer of
data are no substitute for a specific analysis regarding how or why the specific
claim language supports Petitioner’s assertion that the claims are directed to the
abstract idea of secure data transfer. See Pet. 72. Nor does the Petition adequately
tie these examples to the specific claim language, or otherwise sufficiently explain
how they relate to the challenged claims.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even if
conventional, set the claims outside the broad definition of abstract idea, in
particular, whether it is a more technical and less abstract invention?
– Argue the even if all of the structures recited in the claim were generic, this would not
necessarily preclude patent-eligibility. “The combination of claim elements plausibly
recites patentable subject matter because the claim as a whole solves a technological
problem in the computer-telephony industry.” Ronald A. katz Technology Licensing vs
Fedex (W.D. Tenn. Mar. 24, 2016).
– Argue that tangible steps that involve machines and transformation of tangible subject
matter, and tangible implementation of ideas should not be considered as abstract
ideas.
– Argue that the claim relies on a technical solution to a technical problem.
– Argue that the claim is not “an idea, having no particular concrete or tangible form,”
instead, is a “specific and concrete implementation” of the abstract idea. Gonzalez v.
Infostream Group (E.D. Texas, Feb. 6, 2016).
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and Insignal IP v. American Honda
Motor Co. (C.D. Cal., Mar 22, 2016). The court held that “the relevant claim steps
are not mathematical in nature (except perhaps in the “broadest sense”); they
describe concrete steps to be performed,” and that the claims “solve at least two
blind spot system specific practical problems arising from the use of radars…” and
neither of these problems was mathematical, and therefore, the claims are not
directed to an unpatenable abstract algorithm.
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and Ex Parte Bruce Gordon Fuller et
al., (PTAB May 28, 2015). PTAB agreed Applicant’s argument that "claim 1 recites
physical elements that allow a user to view a graph and an event occurring during a
time period of interest on the display if the processor determines that an event
occurred" and that "these elements provide sufficient structure to prevent the
method steps from being interpreted as too abstract."
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and JP Morgan Chase v. Maxim
(PTAB Feb. 20, 2015). The claim at issue is directed to secure data transfer
method, which, while merely reciting generic computer hardware, is held patent
eligible, because the idea is not abstract where claim includes tangible physical
components, and the alleged abstract idea is not sufficiently tied to the claim
language.
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and ContourMed v. American Breast
Care (S.D. Tex. 2016). “While the process…does employ software to process
images and perform 3D modeling, the underlying concept involves substantial
tangible components.” The claim is held not being directed to abstract idea,
because “the concept of the invention involves substantially more than mere data
collection and storage and does not threaten to pre-empt the use of scanners and
computer modeling in other fields.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and claims of Example 1, “directed
towards physically isolating a received communication on a memory sector and
extracting malicious code from that communication to create a sanitized
communication in a new data file. Such action does not describe an abstract
concept, or a concept similar to those found by the courts to be abstract.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and claims of Example 2. “This claim recites a
system “useful in outsource provider serving web pages offering commercial opportunities,” but
is directed to automatically generating and transmitting a web page in response to activation of
a link using data identified with a source web page having certain visually perceptible elements.
The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic
or longstanding commercial practice. The claim addresses a business challenge (retaining
website visitors) that is particular to the Internet. The claimed invention differs from other claims
found by the courts to recite abstract ideas in that it does not “merely recite the performance of
some business practice known from the pre-Internet world along with the requirement to
perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm of computer
networks.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (4). Whether the claim recites physical devices and components (e.g., a
generic computer, memory, a convectional scanning device), which, even
if conventional, set the claims outside the broad definition of abstract
idea, in particular, whether it is a more technical and less abstract
invention?
– Make an analogy between the present claim and claim 1 of Example 23. “The claim
does not recite a basic concept that is similar to any abstract idea previously
identified by the courts. For example, the claim does not recite any mathematical
concept or a mental process such as comparing or categorizing information that
can be performed in the human mind, or by a human using a pen and paper.
Accordingly, the claim does not set forth or describe an abstract idea. Instead, the
claimed method is necessarily rooted in computer technology to overcome a
problem specifically arising in graphical user interfaces. Additionally, the claim does
not recite any other judicial exception. Therefore, the claim is not directed to a
judicial exception.”
6. Step 2A-Challenge the Examiner’s characterization
of what the claims are “directed to”
• (5). Whether one cannot find a previously-known art or article that is
technically similar, and Whether the claim provide a particular approach
and technical implementation to solve problems that could only exist in a
post-internet world?
– In case that the Examiner alleges that the abstract idea resembles an act in a
previously-known art or pre-internet world, try to argue that the claim includes
additional recitations that cannot be simply done by that act in the previously-known
art or pre-internet world. See Communique Laboratory v. Citrix Systems (N.D. Ohio
Dec. 21, 2015), in which the court stated that the claim at issue is “not merely
directed to a broad concept of remote access or automatic call routing…[but]
describes a ‘particular approach’ to solving problems with prior art remote access
patents that could only exist in a post-Internet world”, and thus pass Step 2A.
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (1) Whether the Examiner sweep too much technology
in the alleged abstract idea?
– Try to extract technology out of the alleged abstract idea and then
argue the significance of such technology when the claim is viewed
as whole
• (2) Whether the Examiner has addressed all the claim
recitations?
– Reproduce the claim highlighting the properly alleged abstract idea
in order to distinguish the alleged idea from additional recitations, in
order to make sure all the recitations are being considered and such
recitations are also being considered as an order combination
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (3) If possible, consider adding more technical claim
language, defining the “inventive concept” in the
preamble, e.g., adding language related to the technical
improvements and effects.
– Example: “In a radar system wherein a host vehicle
uses radar to detect target vehicle in a blind spot of the
host vehicle driver, a method of improving the perceived
zone of coverage response of automotive radar
comprising the steps of …” Insignal IP v. American
Honda Motor Co. (C.D. Cal., Mar 22, 2016)
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (4) Whether the Examiner only focused on his own conclusory
statement of the function of the generic computer, and ignored
“the stated purpose of the invention and the limitations of the
claims themselves.”
–
Timeplay vs Audience Entertainment (C.D. Cal Nov. 10, 2015) The claim is
directed to “idea of multi-player gaming using a hand-held controller that has a
display screen where the players are also in front of a share display.” “Unlike the
claims in Alice, the claims here recited hardware that was not simply generic.
Instead, presently recited hardware elements such as “a handheld gaming
controller equipped with a screen and the capability of downloading software” went
beyond simply linking the claimed method to a particular technological
environment…The specification and file history of the ‘124 patent indicate that the
individual components of the claimed system operate together to improve the
functioning of multiplayer gaming systems in a manner that was sufficiently novel.”
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (5) Whether the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in
the realm of computer network? – Not arising in the pre-internet
world
– Make an analogy between the claim and DDR Holdings v. Hotels.com (December 5,
2014) (Claims at issue were directed to managing the look and feel of e-commerce
web pages to provide “store within a store” functionality to product pages) The court
identified the problem if adhering to the routine, conventional functioning of Internet
hyperlink protocol, and held that DDR claims “how interactions with the internet are
manipulated to yield a desired result-a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a hyperlink.”
– Distinguish the present claim from 1) reciting a commonplace business method aimed
at processing business information, 2) applying a known business process to the
particular technological environment of the Internet, or 3) creating or altering
contractual relations using generic computer functions and conventional network
operations, as the Federal Circuit did in DDR Holdings v. Hotels.com (December 5,
2014).
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (5) Whether the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer network? – Not arising in the preinternet world
– Distinguish the claim from Ultramercial v. Hulu (Nov. 14, 2014) (Claims at
issue were directed to distribution of products over the Internet) The court
held that all the process steps “describe an abstract idea, devoid of a
concrete or tangible application,” and that the claims “broadly and
generically claim use of the Internet.”
– Make an analogy between the present claim and claims of Example 1,
even though they pass Step 2A. “The invention claimed here is directed
towards performing isolation and eradication of computer viruses, worms,
and other malicious code, a concept inextricably tied to computer
technology.”
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (5) Whether the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer network? – Not arising in the preinternet world
– Make an analogy between the present claim and claim 2 of Example 21.
“transmitting the alert over a wireless communication channel to activate
the stock viewer application, which causes the alert to display and enables
the connection of the remote subscriber computer to the data source over
the Internet when the remote subscriber computer comes online. These
are meaningful limitations that add more than generally linking the use of
the abstract idea (the general concept of organizing and comparing data)
to the Internet, because they solve an Internet‐centric problem with a
claimed solution that is necessarily rooted in computer technology….”
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (6) Whether there is technical improvement to other technology?
– Make an analogy between the present claim and Diamond v. Diehr and/or
claims of Example 25 (“the claim is eligible because it recites additional
limitations that when considered as an ordered combination provide
meaningful limits on the use of the equation and improve the technical
field of precision rubber molding”).
– Make an analogy between the present claim and claims of Example 3.
“The claimed process with the improved blue noise mask allows the
computer to use to less memory than required for prior masks, results in
faster computation time without sacrificing the quality of the resulting
image as occurred in prior processes, and produces an improved digital
image. These are also improvements in the technology of digital image
processing.”
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (6) Whether there is technical improvement to other technology?
– Make an analogy between the present claim and claims of Example 4. “The
meaningful limitations placed upon the application of the claimed mathematical
operations show that the claim is not directed to performing mathematical
operations on a computer alone. Rather, the combination of elements impose
meaningful limits in that the mathematical operations are applied to improve
an existing technology (global positioning) by improving the signal-acquisition
sensitivity of the receiver to extend the usefulness of the technology into weaksignal environments and providing the location information for display on the
mobile device.”
– Present arguments similar to “it is directed to a problem unique to textmessage telecommunication between a mobile device and a computer” and
“specified how an interaction between a mobile phone and a computer is
manipulated in order to achieve a desired result which overrides conventional
practice.” Messaging Gateway solution V. Amdocs (D Del. Apr. 15, 2015)
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (7) Whether the Examiner fails to consider the claim as a whole, or
fails to consider the additional elements as an ordered
combination?
– “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole. It is
inappropriate to dissect the claims into old and new elements and then to
ignore the presence of the old elements in the analysis. This is particularly
true in a process claim because a new combination of steps in a process
may be patentable even though all the constituents of the combination
were well known and in common use before the combination was made.”
Diamond v. Diehr
– Also see the analysis in Example 3
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (7) Whether the Examiner fails to consider the claim as a whole, or
fails to consider the additional elements as an ordered
combination?
– Make an analogy between the present claim and claims of Example 4.
“the claim is further limited to a mobile device comprising a GPS receiver,
microprocessor, wireless communication transceiver and a display that
receives satellite data, calculates pseudo-ranges, wirelessly transmits the
calculated pseudo-ranges to the server, receives location data from the
server, and displays a visual representation of the received calculated
absolute position from the server. The programmed CPU acts in concert
with the recited features of the mobile device to enable the mobile device
to determine and display its absolute position through interaction with a
remote server and multiple remote satellites.”
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (8) Whether it is possible to argue or even recite an ultimate result
due to the technical solutions?
– Diamond v. Diehr?
– Appears to be the Examiner’s favorable approach
– There may be risk of over narrowing the claim scope and the issue of
divided infringement
– Consider adding it to the preamble, or merely arguing, if not possible to
positively recite in the body of the claim. (see ContourMed v. American
Breast Care (S.D. Tex. 2016) “The patent claims imaging of the breast to
the ultimate end of creating a breast prosthetic, using alignment markers
placed on the breast and captured in the image to aid in the computer
modeling.”)
7. Step 2B-Finding limitations that qualify as
“Significantly More”
• (9). Argue or add a specific limitation other than what is wellunderstood, routine and conventional in the field, or argue or add
unconventional steps that confine the claim to a particular useful
application
– Referring to Novelty and Non-obviousness analysis
• (10). Argue non-preemption
Thank You!
April 26, 2013 • Presentation Title
51