On May 4, the USPTO issued a brand new memorandum for patent examiners, “Formulating an issue Eligibility Rejection and Evaluating the Applicant’s Reaction to an issue Eligibility Rejection” (“Examiner Instructions”) plus a new group of five example claims, this time around within the existence sciences and chemistry arts. The Examiner Instructions really are a positive advance in refining the examination process, but leave open many questions.
The Examiner Instructions are mainly procedural anyway-the way the examiners will be to draft § 101 rejections and react to arguments-instead of addressing substantive issues like the scope of abstract ideas, laws and regulations of nature or natural products This comes, In my opinion, as a result of most of the public comments towards the Interim Guidance and also the This summer Update that centered on getting examiners provide more complete and thorough rejections. There’s a prevalent perception, maintained by real evidence, that a lot of examiners issue boilerplate § 101 rejections that merely identify some alleged abstract idea, after which formulaically assert that there’s no inventive concept because all the claims limitations recite well-known, routine and traditional steps or even the functions of the generic computer.
The Examiner Instructions address this problem in many ways. First, to discourage the boilerplate approach of simply rejecting a whole block of claims in a single fell swoop, the Instructions require examiner to deal with each claim individually (all bold and underlining within the original):
AFTER Figuring out Exactly What The APPLICANT INVENTED AND Creating THE Largest REASONABLE INTERPRETATION From The CLAIMED INVENTION, THE ELIGIBILITY Of Every CLAIM Ought To Be EVALUATED In General While Using TWO-STEP ANALYSIS DETAILED Within The INTERIM ELIGIBILITY GUIDANCE.
When Creating THE REJECTION, Work ACTION MUST Offer An EXPLANATION Why EACH CLAIM IS UNPATENTABLE, WHICH Should Be SUFFICIENTLY Obvious And Particular To Supply APPLICANT SUFFICIENT NOTICE From The Causes Of INELIGIBILITY And Let You TO EFFECTIVELY RESPOND.
There’s emphasis that every claim should be examined at the amount of specifics, not hands-waving generalities:
Find Out The JUDICIAL EXCEPTION BY REFERRING To What’s RECITED (I.E., Established OR DESCRIBED) Within The CLAIM AND EXPLAIN WHY It’s CONSIDERED The Best
IDENTIFY Any Extra ELEMENTS (Particularly Indicate CLAIM FEATURES/LIMITATIONS/STEPS) RECITED Within The CLAIM Past The IDENTIFIED JUDICIAL EXCEPTION AND
EXPLAIN The Main Reason(S) The ADDITIONAL ELEMENTS TAKEN INDIVIDUALLY, As Well As TAKEN Like A COMBINATION, Don’t Increase The Risk For CLAIM In General AMOUNTING TO Considerably Greater Than THE JUDICIAL EXCEPTION.
When it comes to Step 2A, identification from the judicial exception, the Examiner Instructions hit a keynote that’s regularly overlooked by examiners: namely, that they have to both 1) find out the judicial exception and a pair of) explain why the claims limitations are thought as a result:
THE REJECTION MUST Find Out The SPECIFIC CLAIM LIMITATIONS AND EXPLAIN WHY Individuals CLAIM LIMITATIONS Established A JUDICIAL EXCEPTION (E.G., AN ABSTRACT IDEA). In Which The CLAIM DESCRIBES, BUT Doesn’t Specifically Established, THE JUDICIAL EXCEPTION, THE REJECTION Should Also EXPLAIN WHAT Subject Material Individuals LIMITATIONS DESCRIBE, AND WHY THE DESCRIBED Subject Material Is Really A JUDICIAL EXCEPTION.
This statement is interesting since it draws the very first time a among claims that “sets forth” and something that “describes” a judicial exception, and just how examiners are anticipated to deal with this distinction.
Both of these steps are emphasized for all sorts of judicial exception:
Once The EXAMINER HAS DETERMINED THE CLAIM RECITES AN ABSTRACT IDEA, THE REJECTION SHOULD Find Out The ABSTRACT IDEA Because It Is RECITED (I.E., Established OR DESCRIBED) Within The CLAIM, AND EXPLAIN WHY IT Matches An Idea The COURTS HAVE Recognized As AN ABSTRACT IDEA.
Once The EXAMINER HAS DETERMINED THE CLAIM RECITES Legislation OF NATURE Or Perhaps A NATURAL PHENOMENON, THE REJECTION SHOULD Find Out The LAW OF NATURE OR NATURAL PHENOMENON Because It Is RECITED (I.E., Established OR DESCRIBED) Within The CLAIM AND EXPLAIN Utilizing A REASONED RATIONALE WHY It’s CONSIDERED Legislation OF NATURE OR NATURAL PHENOMENON.
Once The EXAMINER HAS DETERMINED THE CLAIM RECITES An Item OF NATURE, THE REJECTION SHOULD Find Out The EXCEPTION Because It Is RECITED (I.E., Established OR DESCRIBED) Within The CLAIM, AND EXPLAIN Utilizing A REASONED RATIONALE WHY The Merchandise Doesn’t Have MARKEDLY DIFFERENT CHARACTERISTICS From The Naturally Sourced COUNTERPART In The NATURAL Condition.
Ideally, this will prevent two common kinds of erroneous Step 2A rejections. Some examiners simply gloss the whole claim, treating it as being a really broad category, completely divorced in the context and details. Other examiners cannot evaluate which the generalization ought to be, so that they quote the whole claim and assert that it is an abstract idea. In neither situation is any real explanation given why the claim is abstract.
When “explaining” why something is abstract idea, the examiner typically cites Alice or Bilski, in addition to buySafe, Smartgene or Planet Bingo, frequently once the claims haven’t much resemblance of the topic of individuals cases. The Examiner Instructions observe that citation of cases is really a “best practice,” and still provide an essential caution:
EXAMINERS SHOULD Know About ANY Reported DECISION RELIED UPON For Making OR MAINTAINING A REJECTION To Make Sure That THE REJECTION Is Fairly Associated With THE Details From The Situation And Also To AVOID RELYING UPON LANGUAGE Removed From CONTEXT.
This statement seems to become a reaction to public comments that examiners routinely take language from context from reported cases meant for their rejections. To become fair, the examiners only do that since the USPTO itself did this within the Interim Guidance by glossing these decisions very broadly. In the end, most examiners aren’t studying Federal Circuit cases-they’re simply quoting in the Interim Guidance when creating a rejection.
The very best (worst?) illustration of this really is SmartGene, Corporation. v Advanced Biological Labs. Within the Interim Guidance, the USPTO used the claim within this situation to illustrate an abstract idea, glossing it really as “comparing new and stored information and taking advantage of rules to recognize options.” This really is exactly how the situation is quoted by examiners. The issue is two-fold. First, Smartgene is really a non-precedential situation-with that basis alone, the situation shouldn’t be relied upon by examiners or perhaps pointed out within the Interim Guidance.
Second, the USPTO’s gloss is really a significant overreach. The SmartGene court mentioned the
[W]HATEVER THE Limitations From The ‘ABSTRACT IDEAS’ CATEGORY, THE CLAIM AT ISSUE HERE INVOLVES A MENTAL PROCESS EXCLUDED FROM SECTION 101: THE MENTAL STEPS OF Evaluating NEW AND STORED INFORMATION And Taking Advantage Of RULES To Recognize MEDICAL OPTIONS. (EMPHASIS ADDED).
A legal court itself unambiguously limited the scope of their decision: “[o]ur ruling is restricted towards the conditions presented here, by which each step is really a familiar area of the conscious procedure that doctors can and do perform within their heads.” Both of these statements allow it to be obvious this situation was narrowly made the decision around the details and also the specific claims. Nevertheless, the USPTO overlooked this express statement restricting the holding, along with the express qualifications of “the mental steps of” and “to recognize medical options” and incorrectly generalized the abstract idea as simply “comparing new and stored information and taking advantage of rules to recognize options.” Essentially, the USPTO produced a brand new “category” abstract ideas from a really specific and narrowly tailored non-precedential opinion.
The outcome of the manipulation continues to be dramatic. SmartGene continues to be reported over 8,8801 occasions by examiners since it was initially pointed out within the Interim Guidance-most cases getting nothing whatsoever to using the medical decision-making as with SmartGene. See for instance, “Method for Calculating Feed Worth of Alfalfa Hay Using Information Available during the time of Baling” (13/573,461), and “Method of Operating an Car Engine (14/138,367). Most amazingly, despite the fact that SmartGene is non-precedential and specifically restricted to its details, because the This summer Update this past year, SmartGene continues to be reported more occasions (7315) than Mayo (4703). That’s evidence the situation has been relied upon beyond it is extremely limited holding.
Obviously, this really is entirely expected, because it difficult to make a information systems method that can’t be characterised as “comparing new and stored information and taking advantage of rules to recognize options.” This broad generalization covers from the simplest situation of storing just one number X and evaluating time with a brand new value Y (“If Y > X then X=Y”), towards the most complex data operations using hundreds, or perhaps countless input values, and a variety of computations. If taken literally, this statement may be used to find any and each claim that they can information systems an abstract idea.
SmartGene isn’t the only non-precedential situation relied on by examiners. Listed here are further statistics showing the regularity of citations at work actions.
- Cyberfone Systems, reported greater than 6,600 occasions
- Planet Bingo,reported greater than 2,870 occasions
- Gametek, reported greater than 520 occasions
- Dietgoal, reported greater than 440 occasions
- Fuzzysharp, reported greater than 300 occasions
This reliance upon non-precedential cases partly accountable for another serious issue: the development of new groups of abstract ideas beyond exactly what the courts have identified. Therefore, the Examiner Instructions condition:
EXAMINERS Shouldn’t Exceed Individuals CONCEPTS THAT Act Like Exactly What The COURTS HAVE Recognized As ABSTRACT IDEAS.
IF APPLICANT CHALLENGES THE IDENTIFICATION Of The ABSTRACT Concept That Took It’s Origin From A COURT Situation And Also The CHALLENGE Isn’t PERSUASIVE, A Suitable RESPONSE Could Be A Reason Why THE ABSTRACT IDEA IDENTIFIED Within The CLAIM Is Comparable To The Idea Within The Reported Situation. When The ORIGINAL REJECTION Didn’t IDENTIFY A Great COURT OR FEDERAL CIRCUIT DECISION Where A SIMILAR ABSTRACT IDEA Was Discovered AND APPLICANT CHALLENGES IDENTIFICATION From The ABSTRACT IDEA, THE EXAMINER Will Have To Indicate A Situation Where A SIMILAR ABSTRACT IDEA WAS IDENTIFIED AND EXPLAIN WHY THE ABSTRACT IDEA RECITED Within The CLAIM Matches THE ABSTRACT IDEA IDENTIFIED Within The Situation To Keep THE REJECTION.
Prosecutors regularly face rejections where the examiners push the envelope of judicial exceptions by identifying something as abstract when there’s been no precedential Federal Circuit situation on point. In a single application, we contended this time and also the examiner responded that they wasn’t restricted to existing examples in the courts, quarrelling that how else would their email list of abstract ideas be expanded? This examiner didn’t appreciate the exceptions are judicial, not administrative, anyway: it can be the courts, and not the examiners to grow their email list. The restricting statement within the Examiner Instructions should restrain these more aggressive tries to enlarge the scope of abstract ideas.
The Examiner Instructions state that appropriate reaction to you challenging the abstract idea is to locate a situation meant for the rejection. This really is incomplete, as there’s another apparent option: withdraw the rejection. If there’s no precedential situation by having an abstract idea that resembles the claims, then your rejection ought to be withdrawn. Obviously, that devolves right into a question of what’s similar, and within lies an enormous amount of variations between what examiners and applicants think. Any declare that has any hint of the commercial flavor is stated by examiners to become “not meaningfully different” from Alice or Bilski, it doesn’t matter how different and it’s also: to examiners, hedging is equivalent to payment processing is equivalent to advertising is equivalent to insurance prices is equivalent to inventory management and so forth. The Alice test might be well call Dying by Example. To individuals of skill within the art–our clients particularly–the main difference between these fields is blindingly obvious.
So as the Examiner Instructions do caution examiners here regarding how to established a rejection under Step 2A, they don’t remedy the actual problem: the inclusion of non-precedential cases within the Eligibility Guidance. Either the instances ought to be removed, or even the gloss from the abstract ideas in individuals cases ought to be–because the Examiner Instructions condition–“reasonably associated with the details from the situation and also to avoid relying upon language removed from context.” Further, the examiners ought to be further instructed that any reported situation needs to be similar not only to an over-all sense, but similar in context and content too.
Later on posts I’ll evaluate the other facets of the Examiner Instructions coping with Step 2B and also the claim examples.
1. The data here regarding the amount of citations for a number of Federal Circuit cases originate from full text searches of office actions since The month of january 24, 2014 (the publication date of SmartGene). The searches were conducted on May 6, 2016 using Patent Consultant. All figures are reported are minimum counts, since Patent Consultant only can access printed applications in PAIR. Printed applications take into account roughly 60% of applications filed using the USPTO. Therefore, the actual quantity of citations of those cases will probably be 66% greater i.e., the chances are SmartGene continues to be reported about 14,800 occasions right now.