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Monday, 07 November 2016 17:43

USPTO November 2016 Memo re Software Patent Eligibility Guidelines

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The USPTO issued a memorandum to patent examiners re. subject matter eligibility relating to software patent claims. In the memorandum, the USPTO outlined two recent Federal Circuit decisions in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and noted that guidance re. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016) will be forthcoming. Both McRO and BASCOM decisions provide examples as to when software claims would be found to be eligible under current guidelines.

In MCRO, the Federal Circuit found that patent claims related to an improvement in computer-related technology are eligible subject matter (here, allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that were previously only provided by human animators). The court's eligibility analysis explained that the claimed invention involved the use of specific rules, rather than human artists, to set morph weights and transition parameters between phonemes, in order to enable automation of certain animation tasks that previously could not be automated. The notable points extrapolated by the patent office, and instructions to examiners from this case, include:

  1. Examiners should consider the claim as a whole under Step 2A (i.e. determining whether a claim is an abstract idea in the first place), and should not overgeneralize the claim or simplify it into its "gist" or core principles. 

  2. An "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. An indication that a claim is directed to an improvement in computer-related technology may include¬≠:
    1. a teaching in the specification about how the claimed invention improves a computer or other technology (e.g., the McRO court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously 2 could not be automated when determining that the claims were directed to improvements in computer animation instead of an abstract idea). In contrast, the court in Affinity Labs ofTX v. DirecTV relied on the specification's failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones directed to an abstract idea;

    2. a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome (e.g., McRO's claims defined a specific way, namely use of particular rules to set morph weights and transitions through phonemes, to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, and thus were not directed to an abstract idea). In contrast, Electric Power Group's claimed method was directed to an abstract idea because it merely presented the results of collecting and analyzing information, without even identifying a particular tool for the presentation.

in BASCOM, the Federal Circuit vacated a judgment of ineligibility because the district court improperly decided the second step (Step 2B) of the Alice/Mayo framework (i.e. when the claim as a whole amounts to significantly more than an abstract idea). The Federal Circuit found that although the claims recited known generic computer and network components, its ordered combination did amount to significantly more than a mere abstract idea, because this combination was not generic or conventional.  The patent office's instructions to examineras extrapolated from this case are as follows:

  1. In Step 2B ofthe USPTO's SME guidance, examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the nonconventional and non-generic arrangement of known, conventional elements.

  2. Regarding preemption, the McRO court discusses the absence of preemption in determining that the claimed invention was not "directed to" a judicial exception. Other decisions, however, do not consider the absence of preemption as conferring patent eligibility (e.g., Synopsys, Fair Warning, Intellectual Ventures v. Symantec, Sequenom, and OIP).

    Presently, eexaminers should continue to use the Mayo/Alice framework (incorporated as Steps 2A and Step 2B ofthe US PTO' s SME guidance) to resolve questions ofpreemption. If applicant argues that a claim does not preempt all applications of the exception, an examiner should reconsider in Step 2A ofthe eligibility analysis whether the claim is directed to an improvement in computer-related technology or a specific way of achieving a desired outcome or end result (as discussed in the McRO section of this memorandum and the US PTO' s prior SME guidance). If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B ofthe eligibility analysis whether the additional elements in combination (as well as individually) are more than the non-conventional and non-generic arrangement of known, conventional elements.

  3. Examiners should avoid relying upon or citing non-precedential decisions (e.g., SmartGene, Cyberfone) unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decision.

The latest USPTO's subject matter eligibility memorandum can be found at

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Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.

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