Is There Room for Improvement?

work in progress sign

“Given the overwhelming public interest” the patent office is seeking feedback on its existing subject matter eligibility guidance, which feedback may be submitted through October 15 via the Federal eRulemaking Portal. I think there is significant dissatisfaction with the state of section 101 jurisprudence, and it would seem that this request for feedback would be an excellent opportunity to provide suggestions to help move in a better direction. However, after considering the current guidance in context, I think there is a good case that the best that can happen is for the guidance to stay in its current form, and that any improvements should come from the courts, not the patent office.

Initially, it is important to recognize that, if the goal is to improve the clarity and certainty of the patent office’s treatment of section 101, is it very clear how to do this. In a report issued in April of 2020, the patent office noted that the uncertainty about determinations of subject matter eligibility decreased 44% with the introduction of the 2019 subject matter eligibility guidance. Comparing that guidance with interim eligibility guidance (and updates thereto) which preceded it, it appears that this uncertainty decrease flowed directly from the introduction of further structure and delineation between the different steps of the Alice/Mayo framework. For example, prior to the 2019 guidance, abstract ideas were to be identified based on comparing the claims of a subject application with the subject matter which had been determined to be ineligible by courts. By contrast, under the 2019 guidance, abstract ideas were identified by determining if they fell within the bounds of one of three enumerated groupings. Similarly, the 2019 guidance explicitly set forth a procedure for determining whether a claim which included an abstract idea was “directed to” that abstract idea, rather than treating identification of an abstract idea and determination of if a claim was directed to an abstract idea as being a single step. There is certainly opportunity for more changes in this direction. For example, the patent office could provide groupings for “practical application” and/or “inventive concept” the same way it did for “abstract idea” in the 2019 guidance. Similarly, it could split the analysis of step 2 of the Alice/Mayo framework into two prongs, the same way as the 2019 guidance did for step 1. Thus, if you want to improve clarity and certainty of patent prosecution, there is a clear approach that has proven successful in providing those results in the past.

The problem with trying to improve the current guidance by making changes similar to those made when the current guidance was adopted in 2019 is that the Federal Circuit is *not* on board with improving the clarity and certainty of section 101. To illustrate, compare the current guidance used by the patent office with the approach taken by the Federal Circuit in the recent case of CareDx, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022). Under the current guidance, “[step 1 of the Alice/Mayo analysis] specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. Instead, analysis of well-understood, routine, conventional activity is done [at step 2].” However, when CareDx’s attorney asserted that conventionality should only be considered at step 2, the Federal Circuit explicitly rejected that proposition: “CareDx also incorrectly characterizes our precedent as limiting the conventionality inquiry to step two. On the contrary, and as the district court recognized, we have repeatedly analyzed conventionality at step one as well.” CareDx, 40 F.4th at 1379. Accordingly, any changes the patent office makes to improve the clarity and certainty of section 101 are likely to widen an already troubling rift between the patent office and the courts.

While there are some areas where it can make sense for the patent office and the courts to apply different standards, determining eligibility under section 101 isn’t one of them. For example, while the patent office interprets more broadly than the courts, patent applicants can always foreclose overbroad interpretations using amendments. As a result, broad PTO interpretations shouldn’t deprive patentable inventions of protection, and the resulting patents are likely to be stronger and more precise than they would be otherwise. By contrast, if the patent office uses an approach to section 101 which is clearer and more certain than that used by the courts, the result would be weaker patents that are more likely to be invalidated by the courts. Indeed, we already have a concrete example of this in the case of  Cleveland Clinic v. True Health, 760 Fed.Appx. 1013 (Fed. Cir. 2019), where the Federal Circuit overruled the Examiner’s conclusion on section 101, even though it meant explicitly disapproving the relevant portion of the patent office’s then current guidance. Accordingly, while increased clarity and certainty would certainly be a welcome change for patent prosecution, if implemented by the patent office without court buy-in it would likely be detrimental to the patent system as a whole.

The bottom line is that, while the current request for comments may seem like a great opportunity to move subject matter eligibility in a positive direction, since the request wasn’t made by the courts, this is probably an opportunity it is better to let slip.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Measuring Uncertainty

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measuring tape

               Current subject matter eligibility jurisprudence is often criticized for increasing uncertainty. However, this raises the question: how can we measure uncertainty to know that it has increased? Until very recently, I thought that the uncertainty criticisms were based on conflating uncertainty with incomprehensibility. I always thought this was wrong, since the two are different concepts. That is, I felt it was relatively easy to predict whether an invention would or would not be treated as ineligible, but that the justifications given for the eligibility/ineligibility determinations were basically gibberish. Recently though, I learned that the patent office purported to have a quantitative measurement of uncertainty for subject matter eligibility, and so I decided to take a look.

In an article published in April of 2020, the patent office quantified uncertainty as a measurement which would be made on the level of individual U.S. patent classes, and defined the uncertainty for any particular class as that class’s inter-examiner variance in proportion of first office actions which included subject matter eligibility rejections. While I applaud this effort to make some kind of objective evaluation of uncertainty, I think an inter-examiner variance-based approach is fundamentally flawed, because it ignores the fact that any rejection based on subject matter eligibility is a sign of underlying uncertainty. To illustrate, consider an example of a subject matter eligibility question where there really is no uncertainty: whether you can patent a literary work. In this case, the answer is clearly no, and the result is that authors protect their literary works with copyrights, not patents. This is only to be expected. Preparing, filing, and prosecuting a patent application is an expensive and time-consuming proposition, and so, if something clearly can’t be patented, people (assuming they are constrained by time and/or money) won’t try to patent it. Thus, even if the proportion of applications treated as ineligible is consistent across examiners, every application treated as ineligible represents a case where two people (i.e., the examiner and the applicant) operating in good faith came to different conclusions when applying the same rules, and therefore where those rules produced uncertainty.

 

               A more accurate measure of uncertainty would consider the behavior of both applicants and examiners, and would account for all circumstances in which their actions reflected uncertainty, not just first office actions.  In this approach, each initial filing of an application, as well as every response which addressed rejections under section 101 should be treated as reflecting the applicant’s conclusion that the claims complied with the relevant rules as of the time of filing, including those of subject matter eligibility. Similarly, because the patent office follows the policy of compact prosecution, but can adopt a new ground of rejection any time before patent issuance, each substantive communication from the patent office would be treated as communicating a conclusion that the claims either do (if there were no rejections under section 101) or do not (if there were rejections under section 101) comply with the then current rules of subject matter eligibility. The level of uncertainty could then be calculated as the number of times the patent office and a patent applicant, looking at the same application and applying the same rules of subject matter eligibility, reached a different conclusion, divided by the total number of times patent applicants and the patent office, looking at the same application and applying the same rules, expressed (either implicitly or explicitly) any conclusion regarding eligibility at all.

 

               Ultimately, I don’t think there is a perfect measurement of the uncertainty in subject matter eligibility law. For example, while the approach I propose here improves on the patent office’s approach by considering the actions of both applicants and the patent office, it misses entirely the uncertainty determinations made by people who decided that subject matter eligibility is too unpredictable, and so decide not to file at all. Similarly, any approach will necessarily omit the uncertainty in whether a claim issued by the patent office will be upheld by the courts, since only a tiny fraction of patents are litigated, and courts use different rules for evaluating eligibility. However, regardless of the limitations, the level of uncertainty in subject matter eligibility determinations is an important topic, and so any effort to measure it should reflect both the actions of the patent office and applicants, as well as the fact that any section 101 rejections are a reflection of differences in opinion, and therefore of uncertainty in the system.

 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Anti Alice Responses to Overcome 101 Rejections in Automated Vehicle Systems Domain

AU 3668 – Computerized Vehicle Controls and Navigation, Radio Wave, Optical and Acoustic Wave Communication, Robotics, and Nuclear Systems

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges:

  • Unfamiliarity with the examiners: When you have many applications in the same few art units, you get a feel for what works or does not work for the examiners in those art units. Getting assigned to a different unit means you have no direct insight into the examiners’ tendencies and preferences.
  • Unfamiliarity with the application of the law: Some units have particular ways of interpreting USPTO guidance and case law that plays out in differences in how they go about examining claims and determining patentability. The kinds of arguments likely to be successful in molecular biology, for example, may be less effective in prosecuting another technology, such as casino gaming or automated vehicle systems.

Using a tool such as Arguminer can simplify the research needed to find arguments that work in a particular art unit with a specific examiner. It can also identify what did not work. Armed with this intelligence, any patent practitioner can take inspiration from proven  arguments in any art unit.

Here are three proven arguments that overcame §101 rejections in art unit 3668 to draw inspiration from:

Technical Details Can Show a Practical Application

Rejections under § 101 are difficult because they often cross over into territory covered by §§ 102 and 103. Under the Alice framework, well-understood, routine, and conventional implementations can be held against the applicant in determining whether the claims recite an abstract idea.

This leads patent practitioners into a logical tautology — an invention comprises patentable subject matter if it is patentable. Specifically, an invention is less likely to encompass an abstract idea under § 101 if it is novel and non-obvious. This means that to overcome a rejection under § 101, you may need to point out the invention’s novel and non-obvious features.

One case in which this worked is U.S. Patent Application Serial No. 14/845,189. This case, argued capably by Gregory M. Murphy of Landmark Intellectual Property Law, PLLC, claims “systems and methods for optimizing energy usage in a household.”

The claims were rejected under § 101 as encompassing “an abstract idea of gathering, analyzing, and displaying data.” In response, the applicant argued that the invention provided a particular practical application that moved the invention outside the realm of an abstract idea under the first prong of the Alice framework.

Specifically, the applicant argued:

Here, the claims are similarly not “directed to an abstract idea.” Much as in Free Stream Media Corp., even though the claims include computer components operating in some manners in which they are designed, the technical focus of the claims is based upon systems including energy generation or storage components, disaggregation based thereon, and actionable user recommendations based on both TOU schedules, but also based on energy generated and/or stored locally. And as in SAIC, the claims do not stop at an abstract concept alone, but present a full solution based on, and grounded in, technology. Specifically, the claims require steps combined in an unconventional method — that is, taking into account local generation or energy storage, before making recommendations based on actual (not hypothetical) past use time periods.

What the applicant relied on in this case was the novelty of the method. By arguing that the method was novel, the applicant successfully persuaded the examiner, Shon G. Foley, that the invention had a practical application beyond a conventional implementation of an abstract idea.

In other words, the examiner originally took the position that the claims were directed to the abstract idea of optimizing energy usage. The applicant countered this position by pointing out the technical details that made the invention unconventional in the industry. As such, the examiner withdrew the rejection because the invention is more than the abstract idea of energy optimization. Instead, it is a concrete and practical application of a technical method.

A New Solution Can Establish a Specific Technological Improvement

A technological improvement is the opposite of an abstract idea. This concept is embodied in the second prong of the Alice framework. By arguing that the claimed invention improves technology, you can persuade an examiner that the invention is “significantly more” than an abstract idea.

A case where this argument succeeded is U.S. Patent Application Serial No. 15/531,319, now U.S. Patent No. 10,408,710. The claims of this patent are directed to a process for taking measurements from a tire and predicting its fault portions.

The examiner rejected the claims under § 101 on the grounds that the method only recited “an idea ‘of itself.'” The examiner explained the rejection by stating that the claims only recited collecting and analyzing information. This left the claimed process disembodied from a technological implementation and, as such, was no more than an “uninstantiated concept.”

In response, Tatsuya Sawada of Kenja IP Law, PC made two clever moves. First, the claims were amended to tighten up the language and tie the method steps to physical objects like processors, temperature measurement units, and displays.

Second, Mr. Sawada focused the arguments in the office action response on the specific technological improvement provided by the invention. That is, rather than broadly stating the field of the invention, the arguments focused on the specific problem the invention addressed.

The method according to claims 20-23 provide an improvement in the conventional a tire fault portion prediction. The claimed method allows for significant enhancement of accuracy in a tire fault portion prediction by calculating fatigue characteristic values corresponding to degrees of fatigues of the tire constituent members based on the temperatures measured with the temperature measurement unit, and predicting fault portions of a tire based on at least one of the fatigue characteristic values and the tire running parameter.

In view of the above, claims 20-23 are directed to significantly more than an abstract idea, because claims 20-23 show that there is a significant improvement in the technical field of the tire fault portion prediction…

This argument overcame the examiner Thomas P. Ingram‘s rejection because the claims were no longer “uninstantiated” or disembodied. Rather, they were tied to a concrete technological improvement.

A Physical Process is the Opposite of an Abstract Idea

In a somewhat related argument, a claim that recites a physical process is much more likely to overcome a rejection under § 101. For example, it is much more difficult for an examiner to reject a claim as reciting “mental steps” when the claims include physical processes.

This argument was used in U.S. Patent Application Serial No. 16/023,699. This application is directed to a process for mitigating soil compaction in agriculture.

The claims were originally rejected under § 101 as encompassing steps that could be performed in the mind of a person. This is often a difficult rejection to overcome because almost any steps could be performed in the human mind with enough support. But Douglas J. Duff, intellectual property counsel at Deere & Company, made some insightful moves.

Mr. Duff amended the claims to include a work tool with a seeding device. This allowed the applicant to argue that the claimed method could not be performed in the human mind because the human mind lacks the physical implements recited in the claims. As such, the claimed method was a physical process rather than a purely algorithmic process.

Contrary to the Office’s rejection, none of the elements the Office identified in claims 1 or 16 fall within any of the groupings of abstract ideas identified by the Office in its 2019 Revised Patent Subject Matter Eligibility Guidance. Instead, the identified claim elements recite a method of mitigating compaction that includes “passing a work tool through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points,” as recited in claim 1, and a method of mitigation compaction with a vehicle that includes “determining vehicle position data as the vehicle passes through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points based on the vehicle position data,” as recited in claim 16. Further, claims 1 and 16 provide the further step of adjusting seeding actuation of the seeding device based on the compaction data.

Accordingly, the steps of adjusting a work tool and adjusting seeding actuation are more than a process that “covers performance of the limitation in the mind but for the recitation of generic computer components,” as alleged by the Office, as the work tool adjustment and seeding actuation are significantly more than mere mental processes.

This argument succeeded. In the next office action, the examiner Mohamed A. Algehaim withdrew the § 101 rejection.

Looking for Inspiration in Your Art Unit?

In Art Unit 3668, you have a fair chance of overcoming a § 101 rejection by arguing the novel features of the invention, the technical improvement brought about by the invention, or tying the control method to a physical process. These arguments can be reasonably adapted to argue on other electronic and computer-controlled processes.

In other units, you can use Arguminer to identify arguments proven to be successful. In fact, you can also use Arguminer to find out what didn’t work to avoid any mistakes. To learn more about Arguminer, contact IP Toolworks.

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Originally published on IPWatchdog.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

How to Write a Winning Patent Office Action Response | USPTO

Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing skills specific to this aspect of your practice can have a major impact on how efficiently and effectively you are able to manage your practice overall.

Office action responses are where patent prosecutors get to “be lawyers.” Patent applications are very focused on the technology and, aside from the claims, could be written by a technical writer. But office action responses are where you will put your legal skills to work including:

  • Analyzing the legal and technical merits of the examiner’s grounds for rejection
  • Developing a strategy for responding to the rejections
  • Researching cases, regulations, and MPEP sections that support your strategy
  • Writing persuasive arguments that are supported by the law
  • Negotiating with examiners to overcome the rejection

Your prosecution work will lay the foundation for the road you are to face with clients and examiners. Successful prosecution means issued patents. Unsuccessful prosecution will land you, your client, and the examiner in a never-ending cycle of rejections and responses.

Here is a crash course in drafting a winning office action response:

Appearance Matters

Many attorneys find it helpful to begin by reviewing an office action response example which can serve as a template for the office action response being prepared. Doing this will:

  • Help you meet the expectations of examiners and clients about what an office action response should look like.
  • Ensure you do not leave anything out that might trigger a technical office action saying your document was non-responsive.
  • Improve your efficiency.

Developing a template for use now can save time with future office action responses as well. This means you can spend your clients’ time researching and writing effective arguments instead of formatting your document.

Reading is Fundamental

Perhaps you remember the slogan from children’s literacy campaigns that “reading is fundamental.” It is nowhere more true than patent prosecution.

The examiner wrote an office action laying out the reasons for rejection. You must read the office action carefully. If you miss, misread, or misinterpret a ground for rejection, you will needlessly extend prosecution by submitting an incomplete response.

Keep in mind that the easiest office action responses to write are those where the examiner has made a factual error. Examiners make mistakes, and they will occasionally misread your claims or the prior art. If you carefully read the office action and cited references, you can catch these mistakes and correct the examiner with a quick response.

Think Before You Write

You might be tempted to jump right into writing the office action response. But before you start writing, you have a few important decisions to make and some research to conduct.

IP Toolworks Demo

Interviewing the Case

Nearly all experienced attorneys we have talked to recommend examiner interviews as among the most important tools at a prosecutor’s disposal. If you’re lucky, you might have a simple rejection, in which case, interviewing might allow you to overcome the rejection by examiner’s amendment without filing a response. More often, you will be dealing with a more complex rejection, in which case, interviewing can help you narrow down or eliminate some issues. Even if you are not able to get the examiner to agree on allowance during the interview, this will help you submit a more focused response.

Many aspects of how you approach the interview are a matter of personal style and preference, that you will refine over the course of practice. However, to get the most out of this important resource, we recommend that you are are: 

  • Early: some examiners are more forthcoming than others when it comes to what they are looking for to succeed. At minimum, conducting the interview early on in the prosecution will ensure that you don’t waste time pursuing a strategy that is far off track
  • Well-prepared: make sure you have planned the discussion thoroughly in advance. You may want to consider preparing an agenda to share with the examiner.
  • Non-confrontational: At minimum make sure you have checked your frustrations at the door, and counseled any inventors who will be attending to do the same. You may even wish to think of the interview as an opportunity to collaborate with the examiner.

We’ve compiled a list of tips to help you master your next examiner interview, which you can read in greater detail here.

Amending the Claims

There are important tradeoffs to be considered when it comes to amending the claims. Amending the claims, particularly in a way that reflects guidance offered by the examiner during an interview,  can demonstrate that you take his or her concerns seriously and that you are willing to compromise to secure allowance.

However, it is best to proceed with some caution, as amending the claims can limit the scope of protection you are able to secure. If you can overcome a rejection without amending the claims, you and your client are almost always better off doing so.

There is no quick and easy way to make this decision. You will make this judgment on a case-by-case basis. However, it can be helpful to look at the examiner’s history to gain insight into what strategies have or have not, been successful in overcoming this rejection in the past. Using a tool like Arguminer, you can research the examiner’s past behavior to help you chart your path forward.

Developing Your Arguments

Many new patent attorneys are unsure about how long an office action response should be. More important than length is how well-thought-out your argument is. A succinct, well-composed argument may well be more successful than a response that is lengthy, but less focused, and may better capture and hold the examiner’s attention.

Remember, examiners have a limited amount of time to devote to each case on their docket. Burdening an examiner with a long, flowery argument will force the examiner to skim your office action response. A punchy argument will keep the examiner’s attention and allow the examiner to identify what you are arguing and how to respond.

At the same time, complex arguments can require more than a few paragraphs to develop. For example, a rejection under §101 will probably need to apply the Alice test and the examination guidelines to the case.

You have many sources for finding and developing arguments. A quote from a case or the MPEP can provide compelling arguments in some cases. However, it is important to remember that because the MPEP is designed for examiners not patent prosecutors, the support you can derive from this source may be limited in scope and is often inefficient to locate.  Colleagues with prior experience with your examiner or issue are an excellent resource and can often provide additional guidance. Finally, tools like Arguminer can help you conduct pin-pointed research to identify which arguments have worked or failed in the past.

Variance in Examiner Behavior

This last point is critical. Examiner variance accounts for much of the outcome in a case. For example, in U.S. Application Serial No. 15/108,712, “Methods, Apparatus, Systems and Mechanisms for Secure Attribute Based Friend Find and Proximity Discovery’” an examiner issued a “mental steps” rejection under §101. In response, the applicant argued:

There is a fundamental difference between the types of claims that the courts have deemed to be ineligible under this exception and the present claims. Specifically, in the cases discussed in MPEP 2106.04(a)(2), subsection Ill.B, the allegedly inventive steps or elements of the claims (i.e., what the claims were directed to) were mental steps that could be performed in the human mind…. However, unlike the cases discussed in MPEP 2106.04(a)(2), … the steps in the pending claims that cannot be performed in the human mind are not ancillary steps to the invention to which the claims are directed. Rather, they are the crux of the invention.

In U.S. Application Serial No.15/610,596, “Method for Predicting Business Income from User Transaction Data,” a different examiner issued the same rejection and the applicant responded with:

… the claims recite operations that are advantageously performed by components of a communication network (a processor [e.g., of a server] deployed in the communication network) and cannot be performed as mental steps in a human’s mind. Moreover, the claims include significant features that go well beyond simply “using an index to search for and retrieve data” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” within a particular technological environment, and therefore do not seek to tie up a judicial exception.

These responses are very similar in both quality and substance. But the first argument succeeded and the second failed. By doing a bit of research into an examiner’s history with a particular issue, you can hit the right points in your argument to persuade an examiner to allow your case.

Successful Patent Prosecution is Not a Gamble

For clients, it can sometimes seem as if their success rate with patent applications is dictated by chance. Although many aspects of prosecution cannot be controlled, with proper preparation and execution, patent prosecution can be guided in the direction of your desired outcome. By reading the office action carefully, and planning your response before you begin writing, and researching what has worked in the past using tools like Arguminer from IP Toolworks, you can give your clients the best possible chances at success. 

Here is how you can use Arguminer to draw inspiration for the case at hand:

Step 1 – Drag & Drop or click to upload a copy of your Office Action

Step 2 – Get results from our database of millions of responses showing what worked for other people facing rejections like yours.

Step 3 – Customize searching to pinpoint the best options by filtering for examiner, date, keywords and more.

Step 4 – Take what you’ve found to apply a strategy you know was successful in almost no time at all.