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2015 Spring Newsletter - USPTO Gives Us a White Rabbit, Leading Examiners Into Alice’s Wonderland
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  Spring 2015

  BPLA Newsletters

 Volume 46, Issue 1

USPTO Gives Us a White Rabbit, Leading Examiners Into Alice’s Wonderland

by Reza Sadr, Ph.D., Pierce Atwood, LLP, and Daniel Lev, Ph. D., Pierce Atwood, LLP

Reza Sadr, Ph.D.

Daniel Lev, Ph. D.

Subject matter eligibility is experiencing major changes, boosted by recent Supreme Court rulings. In Alice Corp. v. CLS Bank Int’l, the Court re-enforced that the framework it formulated in Mayo Collaborative Services v. Prometheus Labs., Inc., applies to all types of claims. In addition, the Court addressed the subject matter eligibility of natural products in Assoc. for Molecular Pathology v. Myriad Genetics, Inc. Since these rulings, district courts and the Court of Appeals for the Federal Circuit have applied the Mayo framework to a variety of patent claims, with results that sometimes seem contradictory. See, e.g., Ultramercial, Inc. v. Hulu LLC (Fed. Cir. Nov. 14, 2014); DDR Holdings, Inc. v., L.P. (Fed. Cir. Dec. 5, 2014); In Re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit. (Fed. Cir. Dec. 17, 2014).

On these shifting grounds and while the law is still being formulated, the USPTO has taken on the difficult task of providing some clear guidelines for its examiners and for patent prosecutors regarding which claims are directed to eligible subject matter. On December 16, 2014, the USPTO published its 2014 Interim Guidance on Patent Subject Matter Eligibility. Also, to illustrate the application of the Interim Guidance for different types of claims, the USPTO published two sets of examples. First, on the same day as the Interim Guidance, the USPTO released the Nature-Based Product Examples, which analyzed sample claims under nature-based exceptions (laws of nature or products of nature). Second, on January 27, 2015, the USPTO released the Abstract Idea Examples, which analyzed sample claims under the abstract idea exception. Also, on January 21, 2015, the USPTO held a public forum (Eligibility Forum) to discuss recent developments in subject matter eligibility, particularly the Interim Guidance. Here we highlight some of the strengths and shortcoming of the Interim Guidance, informed by the Examples and the Eligibility Forum.

The Interim Guidance provides a framework for examining subject matter eligibility of claims based on the recent developments in the law. The Interim Guidance includes a flowchart (copied below) that summarizes the Guidance’s two-step process for analyzing pending claims for subject matter eligibility. Step 1 of the Guidance asks whether the claim is directed to one of the four statutory categories listed in section 101, i.e., process, machine, manufacture, or composition of matter. If the claim is directed to a statutory category, the Interim Guidance’s step 2 applies Mayo’s two-part test to the claim. Specifically, step 2A of the Guidance, corresponding to the first part of the Mayo test, asks whether the claim is directed to one of the three judicial exceptions to patent-eligible subject matter—abstract ideas, laws of nature, and products of nature; step 2B of the Guidance, corresponding to the second part of the Mayo test, asks whether the claim “recites additional elements [the so called inventive concepts] that amount to significantly more than the judicial exception.”

The Interim Guidance supersedes the USPTO’s widely criticized March 2014 Mayo/Myriad Guidance, which addressed examining claims directed to nature-based exceptions based on the Mayo and Myriad decisions. The Interim Guidance generally removes some of the deficiencies of the March 2014 Mayo/Myriad Guidance. For example, unlike the March 2014 Mayo/Myriad Guidance, the Interim Guidance does not include a Wands-like multi-factored balancing approach to determining subject matter eligibility. Also, in some cases, such as for gunpowder in Example 1 of the Nature-Based Products Examples, the Interim Guidance has reversed course, qualifying the example’s claim as patent eligible.

The Interim Guidance and the ensuing two sets of examples improve the subject matter eligibility analysis but also leave many issues unresolved. Some of those issues, discussed below, include consistency in examining a claim “as a whole,” conditions for claims that qualify for a streamlined analysis, and defining some of the fundamental terms of the subject matter eligibility framework, such as “abstract idea” and “inventive concept.”

1.      Focusing on whether the claim “as a whole” is “directed to” a judicial exception in step 2A

As required by Mayo test part one, step 2A of the Interim Guidance emphasizes that the claim should be examined “as a whole” to determine whether the claim is “directed to” a judicial exception. This formulation is an improvement over the March 2014 Mayo/Myriad Guidance, which first asked whether the claim “recites” or “includes” such an exception. The Interim Guidance then regresses, however, by collapsing “directed to” and “recites”: “A claim is directed to a judicial exception when [a judicial exception] is recited (i.e., set forth or described) in the claim.” The Guidance notes, however, that the analysis does not apply to “claims merely ‘involving’ an exception.”

The implication of considering whether a claim “recites” a judicial exception seems to curtail a consideration of the claim “as a whole” because the analysis focuses on identifying any part of the claim that includes an abstract idea, law of nature, or natural phenomenon. The USPTO has applied this contradictory approach to some of the examples in the Nature-Based Product Examples and Abstract Idea Examples, thus confounding the problem.

2.      Streamlined analysis for claims whose “eligibility will be self-evident” in step 2A

The Interim Guidance offers a streamlined eligibility analysis,” which may be a ticket off the directed to-recites merry-go-round of step 2A. The streamlined analysis allows certain claims to bypass the extensive Mayo analysis. Focusing on preemption, this pathway is available to claims that “clearly do not seek to tie up the judicial exception.

During the Eligibility Forum the USPTO officials explained that the purpose of the streamlined analysis is to reduce the number of claims that require a full subject matter analysis, e.g., moving from step 2A to step 2B. Thus, if the claim, as a whole, is clearly not directed to a judicial exception, the claim should enter the “streamlined eligibility analysis” in which the claim bypasses step 2 of the Guidance and moves on to other analyses of patent eligibility (e.g., under sections 102, 103, or 112). Moreover, the USPTO officials affirmed that the streamlined analysis may apply to all types of claims, i.e., claims that are analyzed under the nature-based exceptions (products or laws of nature) and claims that are analyzed under the abstract idea exception.

The Interim Guidance, however, does not clearly define the conditions for claims that qualify for the streamlined analysis, but rather provides some examples:

·         A claim directed to a complex industrial product or manufacturing process that “recites meaningful limitations”, such as a robotic arm assembly that operates according to certain mathematical relationships.

·         A claim that recites a nature-based product but “clearly does not attempt to tie up the nature-based product”, such as an artificial hip prosthesis coated with a naturally occurring mineral.

·         A claim that includes an ancillary nature-based component, such as a cellphone with an electrical contact made of gold or a plastic chair with wood trim.

Practitioners should take note of these examples and consider drafting claims for which it can be argued that the eligibility of the claims as a whole is self-evident because they clearly would not tie up judicially excepted subject matter.

3.       Broader definition of “markedly different” for nature-based products analyzed in step 2A

In a welcome departure from the March 2014 Mayo/Myriad Guidance, the Interim Guidance refocuses the analysis of claims that recite a product of nature. For those claims, the Interim Guidance requires a separate Myriad-based “markedly different” analysis in step 2A, whereas the March 2014 Mayo/Myriad Guidance had included the “markedly different” analysis in step 2B as part of the superseded “significantly different” analysis. Thus, a claim that recites a nature-based product is not directed to the judicial exception if the nature-based product exhibits “markedly different” characteristics from its naturally occurring counterpart. Again, the claim should be considered as a whole; “[c]are should be taken not to overly extend the... analysis to products that... are not nature-based.”

In contrast to the March 2014 Mayo/Myriad Guidance, which focused only on structural differences, the Interim Guidance recognized that markedly different characteristics can also include a nature-based product’s function or other properties. A non-limiting list of characteristic types that may identify marked difference, as derived from case law, includes biological and pharmacological functions or activities, chemical and physical properties, phenotypes, and structure and form.

Practitioners should take note that the Interim Guidance advises that “even a small change can result in markedly different characteristics.” The expansion of those characteristics to include functional and other non-structural properties provides fodder to argue for patentability in a manner analogous to an unexpected results argument in the face of a prima facie case of obviousness.

4.      Eligible computer-based claims under step 2A

The Interim Guidance did not add much clarity to the subject matter eligibility of claims that are directed to computer-based technologies, including software claims. The Abstract Idea Examples, on the other hand, described two instances of computer-based claims, in particular software claims, that are deemed not directed to abstract ideas because (A) the claims are inextricably tied to computer technology or (B) the claims overcome a problem specifically arising in the computer technology by using a solution necessarily rooted in the computer technology. Because for this type of claims the answer to step 2A is “no,” they qualify as subject matter eligible without requiring the more detailed analysis of step 2B.

5.      Searching for an “inventive concept” in step 2B

Regarding part two of the Mayo test, the Interim Guidance and its supplemental examples primarily rely on case law-derived categories of limitations that qualify as “significantly more” than a judicial exception. These categories include:

·         Using a particular machine;

·         Transforming an article into a different state or thing;

·         Improving an existing technology;

·         For computer-based technologies, in particular, the Abstract Idea Examples describes that the inventive concepts may include improving an existing technology, such as computer technology (e.g., computation time or capacity) or another technology (e.g., digital imaging or GPS);

·         Adding specific, unconventional, non-routine limitations or steps that confine the claim to a particular application; and

·         A seemingly catch-all category of “[o]ther meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.”

6.      Examiners have the initial burden of proving subject matter ineligibility

The Interim Guidance includes some clues about the burden of production on the examiners. The Eligibility Forum reemphasized this burden, indicating that in subject matter eligibility rejections, as in all other types of rejection, the examiner bears the initial burden of articulating the grounds of rejection. More specifically, when rejecting a claim as subject matter ineligible, the examiner should (1) identify the exception under step 2A based on which the claim is rejected, (2) explain why the identified exception is an exception, (3) identify additional elements of the claim, and (4) explain why the additional elements do not add significantly more to the exception under step 2B. An applicant may be able to overcome subject matter eligibility rejections by arguing that the examiner has not met those requirements. For example, if an examiner rejects a claim as directed to an abstract idea, the examiner is required to, among other things, clearly state what the alleged abstract idea is and why it qualifies as an abstract idea. To that end, the examiner may be required to use the categories of abstract idea enumerated by the Interim Guidance (e.g., a fundamental or longstanding commercial practice), when necessary, present further evidence (such as citing extrinsic evidence for the proposition that a concept is “fundamental” or “longstanding”).

Further, the USPTO has noted that examiners must conduct a compact examination process. That is, examiners should not stop the analysis after rejecting a claim as subject matter ineligible, and should instead identify and present all possible issues with patent eligibility, such as those raised under sections 112, 102, and 103.

7.      Difficulty of Identifying an Abstract Idea Exception

The Supreme Court and the Federal Circuit have not clearly defined the boundaries of the Abstract Idea exception. As a result, the Interim Guidance and the Abstract Idea Examples have merely listed and applied some categories of abstract ideas. Those categories, as listed in the Interim Guidance, include “fundamental economic practices, certain methods of organizing human activities, an idea ‘of itself,’ and mathematical relationships/formulas.” The question remains as to what may qualify, in general, as an abstract idea, and why. The answer is likely to remain: we will know it when we see it.

8.      Eligibility of business method claims that do not use any machine

Regarding business method claims, some practitioners have been asking for a clear answer to the question whether such a claim can be subject matter eligible even if it is a “pure” business method claim, that is, a business method claim that does not use any machine, e.g., a computer. The Supreme Court and the Federal Circuit have not given any clear answer. The Abstract Idea Examples also do not shed any light on this issue, as they do not include any examples with such pure business method claims.

In conclusion, the Interim Guidance is a step in the right direction. Recognizing that subject matter eligibility is a shifting landscape, the USPTO has stayed true to the Supreme Court and Federal Circuit case law regarding judicial exceptions. But “[i]t’s a poor sort of memory that only works backwards,” and certainly no one wants Alice to cause the Queen to lose her temper again.




Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570






Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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