United States: Public Comments To USPTO’s Preliminary Examination Instructions In View Of Supreme Court Decision In Alice Case

As reported here last month, the USPTO recently issued a memorandum to the Examination Corps, entitled "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al." The memorandum provides preliminary instructions to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. The USPTO requested public comments, and the comment period closed last week on July 31, 2014.1

Two of the country's leading IP bar associations, AIPLA2 and IPO3, submitted comments. The following is a brief summary of these comments:

AIPLA Comments

AIPLA's comments were submitted in a 10-page letter that included 12 subheadings (recited below). In addition, the following specific interrelated points were emphasized as underlying most of the issues identified:

  1. There's been no substantive change in the law. The opinion in Alice applies settled principles for applying the abstract idea exception to patent eligibility of process claims, making no substantive changes to that law. It applied pre-existing law and appears to be limited to the particular facts of the case.
  2. Care must be taken to avoid extending the holding in Alice. The Office does not have substantive rule-making authority, and AIPLA urges the Office to exercise caution in instructing Examiners on Alice to ensure that adequate attention is given to the factual context of the Court's reasoning and to discourage extrapolations that lead to new and unsupported rules of law. The Federal Circuit, and many others, have struggled over the years to understand and explain the decisions of the Supreme Court on subject matter eligibility, and they have often ended up being corrected by the Supreme Court.
  3. The Office and its examiners must "tread carefully." Though the Court declined to explain, and thus "delimit," what an "abstract idea" might be, it also warned, "we tread carefully in construing this exclusionary principle lest it swallow all of patent law." Alice, 573 U.S. ___ (slip. op. at 6) (citing Diamond v. Chakrabarty, 447 U.S. 303 (1980)). This is an admonition and should be observed by the Office and Examiners alike.

The 12 sub-sections are directed to the following points:

  1. Alice made no major changes to the framework for determining patent eligibility.
  2. Alice does not require substantive changes to current examination guidance.
  3. Prior guidance remains viable; the two-part Mayo framework is not exclusive, and may not be appropriate for every claim.
  4. Generalizations and overly broad interpretations should be avoided.
  5. Examiners should be instructed to err on the side of finding eligible subject matter.
  6. The burden rests on the Office to fully support a rejection under section 101 and to take into account evidence submitted by an applicant.
  7. Abstract ideas are those that have always existed or been long prevalent.
  8.  Claim as a whole must be considered when evaluated whether it is directed to an abstract idea.
  9. Guidance to examiners should emphasize adherence to the concrete examples of "abstract idea" found in current case law as opposed to any extension of or addition to the narrow pool of ineligible subject matter.
  10. A complete examination is required.
  11. Each claim type should receive a separate analysis for "something more".
  12. The "something more" requirement must consider a claim as a whole.

IPO Comments

In its 4-page submission, IPO first reminded the USPTO of its overarching view, expressed in the organization's amicus brief to the U.S. Supreme Court in the Alice case. In sum, IPO stated that: (1) patent eligibility for computer-implemented inventions is vital to IPO members and the broader U.S. economy; (2) nearly every economic sector depends on computer-implemented innovations that improve products and services, increase productivity and efficiency, and strengthen competitiveness; (3) the patentability of new and useful technological advancements should not be constrained by overbroad subject matter rejections; and (4) the standard of patentability for computer-implemented inventions should not be higher than the standard applied to innovations in other technological fields.

In addition, IPO's comments included the following main points:

  1. Prima Facie Case of Patent-Ineligible Subject Matter

IPO urges that the final instructions should require examiners to make a detailed prima facie showing that each part of the two-part test4 has been met. Per IPO, examiners should be instructed to support any conclusions with reasoned logic rather than general statements parroting language from stock rejections. Similar to the detailed analysis required to prove prima facie obviousness, it is not enough for an examiner to merely assert that a claim recites an abstract idea and nothing "significantly more." The USPTO training materials showing examples of improper rejections under section 103 are instructive. In the final instructions, the Office should provide some reliable "indicia of abstractness" to ensure uniform and comprehensive application of the two-part test.

IPO also argues that examiners should not automatically conclude that any business method or software-related claim is directed to an abstract idea. Alice did not create a per se excluded category of business methods or software, or impose any special requirements for eligibility of business methods or software. The final instructions should emphasize this point and provide examples of business method and software claims that are not directed to abstract ideas.

In respect to Part 2 of the two-part test, the question is not whether an abstract idea is "present," but whether the claim is "directed to" an abstract idea. Part 2 should be amended accordingly.

In evaluating whether the claim amounts to "significantly more" than the abstract idea, examiners should again avoid conflating section 101 with sections 102 and 103. To this end, the final instructions should clearly explain what will qualify as significantly more. The final instructions should explain whether "significantly more" is the only criterion for establishing patent-eligibility of a claim directed to an abstract idea. Alice listed other criteria including:

an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application;

'additional features' to ensure 'that the claim is more than a drafting effort designed to monopolize the abstract idea';

application[s] of such concepts 'to a new and useful end'... remain eligible for patent protection; and

distinguish[ing] between patents that claim the 'building blocks' of human ingenuity and those that integrate the building blocks into something more, thereby 'transforming' them into a patent-eligible invention.

Alice Corp. (emphasis added) (internal citations omitted).

The preliminary instructions correctly state that, in evaluating whether added limitations qualify as "significantly more," the claims should be considered as a whole by considering all claim limitations, both individually and in combination.

The preliminary instructions provide three examples of limitations that would qualify as "significantly more": (1) improvements to another technology or technical field; (2) improvements to the functioning of the computer itself; or (3) meaningful limitations beyond generally linking use of an abstract idea to a particular technological environment. The final instructions should ideally include even more examples of limitations that would qualify as "significantly more." The final instructions should also require examiners to identify all claim limitations and articulate detailed reasons why they are not "improvements" under examples (1) or (2) or "meaningful" under example (3).

  1. Scope of Examination Under Preliminary Instructions

There is some concern that examiners may be using introductory statements in the preliminary instructions to support claim rejections under section 101. Examiners should avoid extending the scope of the preliminary instructions beyond the two-part test and the precise and narrow holding in Alice. In Alice, the Supreme Court stated, "the claims at issue amount to 'nothing significantly more' than an instruction to apply the abstract idea...using some unspecified, generic computer." [Citation omitted.] This statement is repeated in the introductory section of the preliminary instructions. Examiners should not use this as a basis to reject every claim directed to an abstract idea that includes a generic (or conventional) computer, since the statement does not mean that a conventional computer is never significant to the claim as a whole.

  1. Miscellaneous Suggestions

The preliminary instructions should remind examiners to avoid focusing on issues of patent-eligibility under section 101 to the detriment of other patentability requirements. Examiners should also be instructed to review the disclosure as a whole and, where appropriate, proactively suggest language that would be acceptable to overcome subject matter rejections. The Office should implement the final instructions and provide adequate training and resources as soon as possible.


1 The comments are purportedly available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site.

2 AIPLA is a national bar association with approximately 15,000 members engaged in private and corporate practice, in government service, and in academia. AIPLA members represent a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, copyright and trademark law, as well as other fields of law affecting intellectual property.

3 IPO is a trade association representing companies and individuals in all industries and fields of technology who own or are interested in intellectual property rights. IPO's membership includes more than 200 companies and more than 12,000 individuals who are involved in the association either through their companies or through other classes of membership.

4 "Part 1: Determine whether the claim is directed to an abstract idea." "Part 2: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself." USPTO memo of June 25, 2014 (emphasis in original).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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