The Federal Circuit has further clarified the test for subject matter patentability based on the Supreme Court's Alice Corp v. CLS Bank decision in the Enfish, McRO, and Bascom decisions. After Alice, the patent office issued guidelines for applying the Alice decision that are more helpful, although still allowing examiners wide discretion. These include a two step test:
First, determine if the invention includes an abstract idea (judicial exception). The guidelines do acknowledge that all inventions include abstract ideas on some level.
Second, if the invention includes an abstract idea, determine if more is claimed than the abstract idea. Examiners are instructed to look for meaningful improvements that are significantly more than the abstract idea. Examiners are further instructed that merely applying the abstract idea on a computer or requiring no more than generic computer functions is not enough to be more than an abstract idea.
Here are some examples of improvements that are significantly more than an abstract idea:
- Improvements to another technology or technical field
- Improvements to the functioning of the computer itself
- Applying the judicial exception with, or by use of, a particular machine
- Effecting a transformation or reduction of a particular article to a different state or thing
- Adding a specific limitation other than what is well-understood, routine and conventional in the field
- Adding unconventional steps that confine the claim to a particular useful application
- Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
In Enfish, the Federal Circuit found that the claims were not abstract and so were patentable because they were "...directed to a specific improvement to computer functionality." The court found "...the claims are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea." So specific improvements are not abstract.
Here is the summary of the USPTO's guidance to examiners following the decision:
"In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine ifthe claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas." View the full memo here.
In McRO, the Federal Circuit continue to emphasize that specific improvements such as rules and features that did not preempt other implementations were not abstract ideas:
"Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” Myriad, 133 S. Ct. at 2119–20 (quotation marks omitted). By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse, 56 U.S. at 113. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea." Emphasis added. Claim 1 is shown below.
A method for automatically animating lip synchronization and facial expression of threedimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
The USPTO issued the following guidance to examiners following the McRO decision.
"Notable Points from McRO: Examiners should consider the claim as a whole under Step 2A of the USPTO's SME guidance, and should not overgeneralize the claim or simplify it into its "gist" or core principles, when identifying a concept as a judicial exception. See also the discussion of identifying an abstract idea in the May 4, 2016 Memorandum (in Section II.A) and the discussion of claims directed to improvements in computer-related technology in the May 19, 2016 Memorandum about Enfish, which is available on the USPTO's SME Webpage.
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
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 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. DirecTVrelied 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 ofparticular rules to set morph weights and transitions through phonemes, to solve the problem ofproducing 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." Read the full memo here.
These decisions further clarify what is required to protect software inventions. For software, or any other kind of invention to be patentable, it must have an "inventive concept" that includes meaningful improvements that do not preempt other approaches to solving the problem. The meaningful improvements must improve another technology or technical field, improve the function of a computer, transform or reduce of a particular article to a different state or thing, include steps that confine the claim to a particular useful application, or link the use of the abstract idea to a particular technical environment.
This can be illustrated with a simple high tech example, flying cars. One can't patent the abstract idea of a flying car. One must protect the unique inventive elements that make the car fly. Similarly, one can't patent the abstract idea of what software does. One must protect the inventive elements that allow the software to do what it does.
Some of the strategies that I have found to work are:
Include a final transformation or change as a result of the software invention. Physical transformations and changes have been particularly useful in overcoming 101 rejections.
Include elements that improve the function of the the processor or computer.
Claim the methodology by which a result is achieved instead of the result itself. For this to work, it is vital to have implementation details in the specification.
Claim the details that go beyond an abstract idea, particularly those that narrow the scope of the idea.
Using these strategies, we have been consistently winning allowance for software patents.
The Federal Circuit's Internet Patents Corp. v. Active Networks decision provides an excellent example of what must be claimed to patent a software invention. The court held that the 7,707,505 patent was invalid. It claimed:
1. A method of providing an intelligent user interface to an online application comprising the steps of:
furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;
displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and
maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.
The decision highlights the importance of including the key functional details of a technical solution, noting "As the district court observed, claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. The court concluded that the claim is directed to the idea itself—the abstract idea of avoiding loss of data. IPC's proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon."
Show Improvement to Computer Operation
The specification should explain how the inventive elements improve the operation of a computer.
Channeling claims can be used to channel an application to an art group with a higher allowance rate. For example, communication technologies have high allowance rates. Most software inventions use communications protocols such as LTE or TCP. Including claims directed to modifications to the TCP window size and window scaling can channel the application to a communications group.
Non-Conventional Arrangement of Conventional Elements
In Bascom v. ATT, the Federal Circuit found that an unconventional arrangement of conventional elements provided signficant limitations that were patentable. The court stated "The inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. BASCOM explains that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account."
Here is a summary of the USPTO's guidance to examiner's on the Bascom decision:
"Notable Point from BASCOM: 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. See also the discussion of evaluating combinations of additional elements in the May 4, 2016 Memorandum (in Section Il.B), and the July 2015 Update (in Section I)." Read the full memo here.