BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

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Monday, January 26, 2015, 9:23 AM

Arguing a Post-Alice §101 “Abstract Idea” Rejection during Patent Prosecution

Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations).  Patent applications are also facing similar challenge, with some claims being rejected during examination by the United States Patent and Trademark Office (USPTO), as allegedly directed to patent-ineligible subject matter per the above.  What can we, as patent practitioners, do during patent prosecution, to argue for patent claim subject matter eligibility, when faced with such a rejection?

There is an advantage we can make use of during patent prosecution.  One excellent article, “Are Questions of Fact Being Overlooked in Software Cases?”  by Alexander Hadjis
analyzes recent appellate decisions, dispositive motions at the onset of litigation, and dismissals of patents based on assertion of patent claims having patent-ineligible subject matter.  This provides us with some clues as to differences between the litigation environment and the patent prosecution environment.  According to the analysis in that article, such dismissals of patents early during litigation proceedings do not rely on formal claims construction before a jury and do not rely on analysis of claims under the obviousness doctrine, particularly regarding scope and content of prior art, level of ordinary skill in the pertinent art, differences between the claimed invention in prior art and other objective evidence.  In other words, such dismissal of a patent during litigation does not require analysis of the claims under 35 USC §102 and §103.

But, fortunately for patent prosecution, the USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, issued December 16, 2014, recommends (on pages 25-26):

II.  Complete Examination

Regardless of whether a rejection under 35 U.S.C. 101 is made, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting.

So, during patent prosecution (for the near term, anyway) we should expect that any rejection of claims as allegedly directed to patent-ineligible subject matter, under 35 USC §101 judicial exceptions including abstract ideas, will also be accompanied by cited references and Examiner analysis of claims under 35 USC §102 and/or 35 USC §103, in an Office Action.  This provides us with the advantage, as compared to the above-discussed litigation environment, of having (usually) other patents or patent application publications with specifications and claims to which the present claims under examination can be compared as to scope.

Assuming we can convincingly argue that the present claims are neither anticipated (under 35 USC §102) by nor obvious (under 35 USC §103) over the reference(s) cited in the Office Action (this is part of our usual job during patent examination, as patent practitioners), we may then have additional material to bolster arguments relative to 35 USC §101.  For example, one line of inquiry to pursue is to determine whether the cited references are in some other way related to the abstract idea that the Examiner is citing during the §101 rejection (in which the present claims are alleged to be directed to an abstract idea).  If the present claims can be shown different from the cited references, per the §102 and/or §103 analysis, then it could be argued that the present claims constitute more than just a collection of computer components, the abstract idea, and the instruction to “apply it” (per Alice).  In the language of Alice, the present claims could then be shown to be inventive over both the cited art and the abstract idea, because of this difference in scope as compared to the cited art under §102 and/or §103.

Another line of inquiry to pursue is to determine whether the present claims attempt to preempt all possible uses of the abstract idea (per Alice), or in the language of the USPTO Interim Guidance (cited above, and see page 25) “attempt to tie up use of the mathematical relationships”.  If the Office Action cited art shows some other use of the abstract idea or the mathematical relationship, and particularly when (as above) there is a difference between the present claims and the cited art under the §102 and/or §103 analysis, it could be argued that this is a factual finding showing that the present claims do not preempt all possible uses of the abstract idea or tie up the use of the mathematical relationships.

Of course, these lines of inquiry and analysis should be tailored to the specifics of the claims being examined during patent prosecution.  Variations of the above and other lines of inquiry relating to Alice and the USPTO Interim Guidance can be developed.  The key leverage to apply during patent prosecution, is that cited references, §102 or §103 analysis, claims construction, and claims scope analysis and comparison are available for factual findings in answer to a §101 “abstract idea” rejection.  Having such arguments, and factual findings, available in the patent prosecution history, may even be of benefit later on if a patent is challenged in the courts.  This is all part of the art of patenting.

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Monday, January 12, 2015, 8:58 AM

Decreasing Ambiguity in Claims

A well-written claim should not be ambiguous.  At least, that is one goal.  Yet, language is full of imprecision, many words have multiple dictionary definitions, and ofttimes lengthy and complex grammatical constructions in patent claims give rise to multiple possible interpretations.  How can we reduce ambiguity in claims?

Time-honored and valuable techniques are to read, proofread, and reread each claim thoroughly, and have a reviewer do likewise.  A key test is to ask one’s self, is the claim clear?  Could an Examiner, or an opponent in court, misinterpret or twist meaning in some part of this claim?  If so, is there a way of rewriting that part of the claim so as to make it clearer?  Claim drafting is an iterative process, and this test should be applied many times while writing, and again when reviewing each claim.

Here is a misleadingly simple phrase, with multiple interpretations, which could serve as a template for a line or subparagraph in a claim: an X having a plurality of Y with Z.  Does the phrase mean one X that has several instances of Y, and each instance of Y is accompanied by a Z that belongs with the Y?  Or, does it mean one X that has several instances of Y, and the X is also with a Z?  Adding punctuation might not help.  Consider: an X, having a plurality of Y, with Z.  This is no clearer.  How about: an X having a plurality of Y, each Y having a Z.  Or, an X having a plurality of Y, the X with a Z.  These seem clearer.  Breaking up a phrase into sub phrases, and referencing part of one of the sub phrases in another one of the sub phrases can bring clarity.

A useful exercise, if faced with a challenging, compound phrase, is to take the phrase apart and write a series of separate sentences (e.g., as if drafting an abstract or summary for the patent application).  Make sure each sentence is straightforward and clear.  Then rewrite the original compound phrase in terms of the sentences, re-crafting each sentence as a phrase in the new claim.  Make sure the new phrases connect well, and use proper antecedent establishment and reference.  Then, massage, iterate, smooth and retest the claim.  Does the claim flow?  Is the claim clear?  In time, with practice and experience, this process gets to be part of the toolset.  All part of the art of patenting.

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Monday, January 5, 2015, 8:42 AM

Claim Scope and the Actor(s) in a Claim

Scope of a claim and the number of actors in a claim are interrelated.  Each of these affects what is claimed and whether this provides good claim coverage for the client.  An apparatus claim is usually a single actor claim, but system claims and method claims are not necessarily so straightforward to craft as a single actor claim.  Determining what product(s) the client actually sells or intends to sell, and what are the interactions in the product, provides good guidance as to the claim scope.

What we mean by the terms “actor”, and “single actor claim”?  The actor, or agent, is the performer of an action.  Take, for example, a software-based invention that involves interaction between one or more users and one or more machines, ostensibly programmed computers, servers, user devices, etc.  Or, an invention involving specialized equipment that has programming.  The actor could be a user, performing actions on the machine and interacting with the machine.  A method claim could recite the user pressing a button, the user inputting data, or the user deciding to do an action, etc.  But, writing a method claim from the user standpoint, with the user as the actor, can be problematic.  We are told, as patent practitioners, that litigation involving claims reciting a user as the actor are difficult to prosecute as they involve the user as a contributory party to infringement.  Claim scope having the user as an actor is thus to be avoided.

Instead, it is preferred to have the machine be the actor.  That is, the machine, or a processor of the machine, is performing the actions in the method claim.  Another way of visualizing this is that the method claim can be written from the viewpoint of the machine.  For example, the method claim can talk about receiving input from a user, sending output to a user, receiving input from a user device, sending output to a user device, and so on.

System claims usually involve multiple pieces of the system (members, devices, assemblies, subassemblies, etc.)  It is important to determine, as discussed above, what part of the system the client is selling.  Is the client selling entire, bundled systems?  Or is the client selling one component of a system?  Claim scope should be adjusted accordingly.  Likewise, the number of actors and viewpoint of the actor should be adjusted accordingly for the claims.  For example, if the client is selling component A in a system of A, B and C, the system claim(s) and the method claim (if appropriate) should be written from the viewpoint of component A.  The system claim could claim component A, configured or arranged to receive input from component B and to direct component C to perform operation X, based on determination Y.  On the other hand, if the client is selling a bundled system of A, B and C, the system claim could claim component A…; component B…; and component C…, wherein etc.  These are templates to consider, rather than exact claim language.

In the system example, the claim could be written with a single actor, e.g., the system.  Or, the claim could be written with multiple actors, each component being an actor.  In a way, this is still a single actor claim in that the components are part of the single actor.  Emphasis, here, is on matching the scope of the claim, the viewpoint of the claim, and the actor in the claim to the client’s interests.  This is all part of the art of patenting.

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