Interim Guidance: Summaries of Patent Eligibility Cases
The Interim Guidance provides succinct summaries of various Supreme Court and Federal Circuit decisions. As explained by the Office at the January 21, 2015 Patent Eligibility Forum, these summaries were provided as an initial attempt to give examiners examples and explanations of eligible and ineligible claims.
While a laudable and creative effort, there are several problems with this approach. As acknowledged by the Office at the Patent Eligibility Forum, the case law is “apparently inconsistent.” Yet, the Interim Guidance does not admit that this fact, and instead presents the cases as if they are all consistent with each other. This creates a false impression in the minds of the examiners that the evaluation of patent eligibility is a precise and deterministic exercise—as evidenced by the “flowchart” on page 9.
Worse, it overlooks the fact that statements made in cases such as Parker v. Flook or Alice, can be easily used to demonstrate that presumptively eligible claims in Diamond v. Diehr are ineligible. For example, Alice’s prohibitions on well understood, routine and conventional steps, and Flook’s exclusion of pre-solution (“data gathering”) and post-solution activity eliminate all but the “repetitively calculating” and “comparing” steps, since it was found by the examiner and the Board that the rests of the steps of the claim were conventional. Diehr, 450 U.S. 175, 208 (1972). The claim was directed to the abstract idea of using a mathematical algorithm, the Arrhenius equation, to control a chemical process. This abstract idea was implemented on generic computer, claimed only at the highest level of generality, without identifying any inventive hardware. Thus, the claim should have been ineligible. David Stein provides an excellent demonstration of how Alice invalidates Diehr.
As another example, the Interim Guidance contains very superficial discussions of O'Reilly v. Morse and Tilghman v. Proctor, referring how Morse's "claim 8 recites the use of electromagnetism without limits on the machinery for recording, which was found ineligible," while Tilghman's claim "is directed instead to a particular mode of bringing about the desired chemical union, i.e., by heating the water under such pressure that the water does not become steam, and accordingly was found eligible." The problem is that the claims were essentially identical in their structure, both claiming obtaining adesired result by a generic mode of operation.
| Morse’s Claim | Tilghman's Claim |
|---|---|
| "the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, signs, or letters, at any distances," | “I claim as of my invention the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.” |
These cases are simply inconsistent if they are read as cases about patent eligibility. Properly understood, these are cases about enablement: what separates them is that in Morse, the Court found that Morse "claims what he has not described in the manner required by law." In Tilghman, on the other hand, the Court found that Tilghman "specifies the means he uses in a manner so full and exact that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes." See Patent Eligibility: The Historical Cases for more details. These cases should be removed from the Interim Guidance.
Similarly, the Interim Guidance includes a summary of Mackay Radio & Telegraph Co. v. Radio Corp. of America, and states "The claim practically applies the mathematical formula to configure a particular antenna and thus was found eligible." Not so fast. This was not about patent eligibility. The Court expressly stated that “We assume, without deciding the point, that this advance was invention, even though it was achieved by the logical application of a known scientific law to a familiar type of antenna.” While the Interim Guidance comes to the “right” conclusion (claims eligible) it nonetheless misstates what the Court held.
Hypothetical "Abstract Idea" Claim Examples
In the Abstract Idea Examples the Office provided hypothetical claims based on various Federal Circuit cases, along with analysis of the cases. Creating hypotheticals from existing cases has perverse outcomes. For patent claims that were in fact eligible, such as in RCT v. Microsoft, and SiRF Technology Inc. v. International Trade Commission, the hypotheticals add limitations to the claim that were not present in the original. This makes the presented claim narrower and less broad—implying incorrectly that the original claim was not eligible.
| RCT: Actual Claim | USPTO's Hypothetical Claim |
|---|---|
| A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random nondeterministic, non-white noise single valued func tion which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images | 1. A computer-implemented method for halftoning a gray scale image, comprising the steps of: generating, with a processor, a blue noise mask by encoding changes in pixel values across a plurality of blue noise filtered dot profiles at varying gray levels; storing the blue noise mask in a first memory location; receiving a gray scale image and storing the gray scale image in a second memory location; comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image to a threshold number in the corresponding position of the blue noise mask to produce a binary image array; and converting the binary image array to a halftoned image |
| SiRF Technologies: Actual Claim | USPTO's Hypothetical Claim |
A method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals comprising: providing pseudoranges that estimate the range of the GPS receiver to a plurality of GPS satellites; providing an estimate of an absolute time of reception of a plurality of satellite signals; providing an estimate of a position of the GPS receiver; providing satellite ephemeris data; computing absolute position and absolute time using said pseudoranges by updating said estimate of an absolute time and the estimate of position of the GPS receiver. |
A method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals comprising: calculating pseudo-ranges, at a mobile device comprising a GPS receiver, a microprocessor, a display, and a wireless communication transceiver, by averaging PN codes received by the GPS receiver from a plurality of GPS satellites; wirelessly transmitting the calculated pseudo-ranges from the mobile device to a server, wherein the server comprises a central processing unit (CPU); calculating, by the server CPU, absolute time that the PN codes were sent from the GPS satellites to the GPS receiver using the pseudo-ranges and an estimated position of the GPS receiver; using a mathematical model to calculate, by the server CPU, absolute position of the GPS receiver based on the pseudo-ranges and calculated absolute time; transmitting the absolute position from the server to the mobile device; and displaying a visual representation of the absolute position on the display of the mobile device. |
In both cases, there are significant differences between the actual claim found eligible and the much narrower hypothetical claim. For example, the actual claim in RCT is directed to the single step of a pixel-by-pixel comparison, whereas the hypothetical lards in additional steps of generating a mask, storing the mask, and converting a received image. Similarly, the hypothetical claim in SiRF adds steps of wirelessly transmitting, and the Office's favorite "displaying." All these extra steps improperly interprets and narrows the cases and misguides the examiners into thinking that only such narrower claims are eligible with similar steps are eligible.
Further, the analysis of RCT v. Microsoft Corp completely mis-characterizes the decision. The Office states “Since the mathematical operation of generating a blue noise mask is recited in the claim, the claim is “directed to” a judicial exception.” This is precisely the opposite of what the court held: “In that context, this court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents.” and “These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness.” RCT should have been discussed as a case where the court found the claims to not be abstract at Step 2A, not a case where they found “something more” in Step 2B.
Similarly, the Office gets SiRF Technology Inc. v. International Trade Commission wrong by saying that the claims here were also directed to an abstract idea. The SiiRF court did not find that patent claims were abstract—indeed, the word “abstract” does not even appear in the court’s opinion. Rather, the opinion is properly interpreted as holding that the claims were not abstract to begin with because:
Pseudoranges, which are the distances or estimated distances between satellites and a GPS receiver, can exist only with respect to a particular GPS receiver that receives the satellite signals…. It is clear that the methods at issue could not be performed without the use of a GPS receiver; indeed without a GPS receiver it would be impossible to generate pseudoranges or to determine the position of the GPS receiver whose position is the precise goal of the claims.
In short, like DDR Holdings, “The court did not clearly indicate whether the claim was directed to one or more of these proposed abstract ideas,” and “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of [computer] satellite networks.” Here too, mischaracterizing the court’s reasoning falsely leads examiners to believe that calculating GPS positions or other similar data is inherently abstract, when the court made no such finding. This is prejudicial to applicants,and the Office should revise the analysis to correctly reflect the court's reasoning.
As to the ineligible claim examples, the explanations of the court decisions are very thin, as compared to the eligible examples. This, of course, makes sense, since the underlying explanations by the courts are typically very sparse, offering little in the way of any actual reason why particular limitations were insufficient. For example, with respect to SmartGene v. ABL, the form of the claim is commonly found in expert system patents, with a recitation of specific databases and the use of the data to determine a specific result (“ranked list”); there was no explanation in the court’s opinion, and none here why the specifically claimed databases were insufficient. The treatment of Cyberfone is even less useful: there is only a terse mention of what would be Step 2A (“the ideas of collecting information…”) and no explanation whatsoever of why claimed steps failed Step 2B.
As a result, the explanations provide the examiners with grounds that can be improperly extended to reject otherwise eligible claims that appear similar to the ineligible claim examples. And they suggest to examiners that they need only provide the thinnest of explanations (or no explanations at all) as to the basis of the rejection: after all, if the Office is providing these “training” examples, then examiners can properly assume that the explanations here are proper in form and completeness, and should be followed.
Final Observations
The Office should clearly inform that examiners that the case law is not consistent, and it is precisely for this reason that they should “tread carefully” when considering a § 101 rejection, and therefore strictly comply with the requirements for evidentiary support and detailed, logical and technically accurate reasoning and analysis. The Office empowers the examiners to make reasoned judgments in obviousness, enablement, indefiniteness, where there are often contradictory positions based on complex legal and technological arguments; the Office should equally trust examiners to deal with the complexity of patent eligibility, rather than pretend that the framework is perfectly logical.
Acknowledging the inconsistency and contradictions in the case law also gives the Office the tools and transparency to use its own technological expertise to better interpret the cases in line with how inventors actually invent. In particular, the Office should clarify that rules that discount pre- and post-solution activity and limitations to technological fields should not be used indiscriminately, since they inconsistent with how the inventors actually go about the business of inventing—indeed these types of limitations are often part of the “inventive concept” that examiners are supposed to identify in Step 2B.
For example, an inventive concept can come from an inventor identifying, from potentially thousands of variables, which ones are important to solving a known problem and which are not. This is common in many of the sciences, where there are many possible factors or variables that causally control a physical process, and it takes inventive skill and contribution to formulate a theory that explains the physical process as dependent on a very specific subset of these factors.
Similarly, pre-solution activity provides a new way of obtaining data for use in an existing algorithm, or specific “pre-processing” steps that beneficially transform the data so that it can be more efficiently used. This was the case in Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 1055 (Fed. Cir. 1992) (pre-processing of the electrocardiographic signal was a “critical feature of the Simson invention.”). A rule against post-solution activity likewise improperly disregards situations where the inventive concept is the new use of results of a known algorithm, or a new way of presenting the results. There are many patents based on these kinds of inventive contributions.
A rule against field of use limitations also has unintended consequences. One of the most powerful forms of invention is to apply knowledge developed in one field to an entirely different and unrelated field. “Transforming concepts from one form into another can yield discoveries in any field.” Robert and Michele Root-Bernstein, Sparks of Genius: The 13 Thinking Tools of the World’s Most Creative People 286 (1999). The inventive contribution comes from realizing that a particular mechanism used in one field of technology solves a problem in a different field of technology. In such cases, a limitation that substantively restricts the application of an existing solution to a new field should be acceptable and should not be ignored for purposes of patent eligibility—specifically if it is desired to encourage this type of cross-disciplinary innovation.
Not surprisingly, experienced examiners often suggest that applicants to add these kinds of limitations to claims precisely to make them allowable, since they know—as scientists and engineers—that they often best capture the core inventive contribution and thereby prevent the claim from reading on, i.e., “preempting,” the prior art references which disclose other ways of practicing the abstract idea. To turn these essential approaches to invention into rules against patent eligibility is to deny the very nature of human creativity.
*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.