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Category : Patentable Subject Matter

Cache Data Types: Patent Eligible Subject Matter

The question of what software is patent-eligible subject matter is still evolving. The Federal Circuit in Visual Memory v. NVIDIA,  recently weighed in with another guidepost on the way to patent eligibility.

Claim 1 reads:

A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

a main memory connected to said bus; an

a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

In the lower court decision, the district court concluded that the “abstract idea of categorical data storage” was something that humans had been doing for many years. For this reason, the claim ran afoul of the Supreme Court’s Alice rationale that claims cannot “tend to impede innovation more than it would tend to promote it.” This captures the challenges that courts and USPTO examiners currently face from the limited guidance given in the Supreme Court’s Alice decision.

The Federal Circuit rejected the district court’s reasoning in a split decision. The reasoning was mostly limited to the facts of the case, “Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage.” The court expanded on this to conclude, with reference to its earlier Enfish and Thales cases, “As with Enfish’s self-referential table and the motion tracking system in Thales, the claims here are directed to a technological improvement: an enhanced computer memory system.”

The split decision, unfortunately, adds limited clarity for future cases, since the dissenting opinion expresses what others on the Federal Circuit still believe, “Because the ’740 patent does not describe how to implement the “programmable operational characteristic” and requires someone else to supply the innovative programming effort, it is not properly described as directed to an improvement in computer systems.”

Patent Month in Review: March 2017

No Laches in Patent Infringement Cases

The Supreme Court addressed the distinction between laches and statutes of limitations in patent cases. Its 7-1 SCA Hygeine Products AKT vs. First Quality Products, LLC (S. Ct. 2017) considered whether laches could be used as a defense by defendant First Quality when 7 years had passed from when it first received notice of potential infringement in 2003 and the date that SCA filed an infringement complaint in 2010.  Considering the Congress-passed statute for damages recovery in 35 USC 286 and the laches defense, the Court followed its 2014 Petrella decision in a similar case under copyright law, “Laches is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.”

Eligibility: Get Technical or Get Denied

Dennis Crouch summarized a nonprecendential opinion well with the above maxim to apply to subject matter eligibility questions. The Federal Circuit’s conclusion provides some guidance for future applicants and practitioners, “In contrast to Diehr, claim 1 recites a method that changes the way electronic information is displayed via an unknown and unclaimed process. Absent any limitation to how the data are changed, there is little, if any, transformative effect.[1] Data are still data.” According to the court, the patent failed to show an inventive “technical manner” in which “data is gathered, analyzed, or output.”

[1] The machine or transformation test lives. See Older Supreme Court Cases Provide Guidance for Determining Patentable Subject Matter Post Alice

Assignment of Patent Alone May Not Extend to Child Applications

The Federal Circuit held that a party that had been assigned a parent patent lacked standing to sue for child patents issued from the parent patent. The assignment in question did not assign rights related to continuations, technical know how, or general IP rights.

Patent Month in Review September

dreamstime_s_38780059 2By Stephen B. Schott

Abstract Idea Step in Patentable Subject Matter: Animated Lip Syncing Not Abstract, is Eligible
MCRO, Inc. v. Bandai Namco Games America, Inc., 2015-1080 (Fed. Cir. 2016)

“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.” 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. 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. Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.”

‘576 patent claim 1 reads as follows.

1. A method for automatically animating lip synchronization and facial expression of three-dimensional 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;
an 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.

Declaratory Judgment: Even if you don’t identify a product, you might be sued for DJ
Asia Vital v. Asetek Danmark, 2015-1597 (Fed. Cir. 2016)
Asetek (1) rehashed the volatile relationship between the parties, saying that poor experiences with AVC [Asia Vital] in the past have “sown distrust in Asetek for AVC”; (2) stated that it “does not license its patents” generally and, more specifically, that it would not license them to AVC due to the previous conflicts between the parties; (3) accused AVC of “likely selling other infringing products in the United States”; (4) warned AVC that it “enforced its IP” and noted its “pending litigations against CoolIT and Cooler Master”— companies that AVC alleges sell products similar to the K7 and K9; and (5) emphasized that it has been allowed a patent in the European Union with claims similar to the asserted patents and also has similar claims pending in China…Moreover, AVC alleges that Asetek made threats to its customers regarding AVC’s infringement of the asserted patents.

The Federal Circuit concluded that “Such threats constitute affirmative actions by Asetek to impede and frustrate AVC’s attempts to meaningfully participate in the liquid cooling market and further support our conclusion that a substantial controversy existed between the parties.”

FTC Releases Patent Assertion Entity Report
Report

The FTC issued a report on patent assertion entities (pejoratively called patent trolls by some). The FTC differentiated between litigation assertion entities (those that sue) and portfolio assertion entities (those that look to license and develop technologies).  This may be a critical distinction if legislators take action against patent assertion entities.

USPTO Raising Patent Fees on January 1, 2017
Official Announcement

Patent fees will rise on January 1. Most fees will increase by 10%, with some fees for reexaminations rising by more than 20-30%.

Patent Complaint Must Identify Infringement with Element-by-Element Specificity
Lyda v. CBS Corp., 2015-1923 (Fed. Cir. 2016)

Amended Complaint must plausibly allege that Defendants exercise the requisite “direction or control” over the performance of the claim steps, such that performance of every step is attributable to Defendants. The Amended Complaint alleges that CBS Interactive controls certain independent contractors who in turn direct and control the “participation” of unnamed third persons to send votes on either their own or borrowed cell phones. Mr. Lyda does not set forth any factual allegations in support of his assertion that CBS Interactive directed or controlled the independent contractors….There are thus no allegations in the Amended Complaint that can form the basis of a reasonable inference that each claim step was performed by or should be attributed to Defendants. The Amended Complaint fails to plausibly plead sufficient facts to ground a joint infringement claim under this court’s Akamai decision and does not satisfy the Iqbal/Twombly pleading standard.
Supreme Court Denies All Patentable Subject Matter Petitions For Upcoming Term
Patently-O Story

 

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2016 May Patent Law Update

dreamstime_s_38780059 2

By Stephen B. Schott

PRIORITY DATES OF EARLIER APPLICATIONS
Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA, (D.Del 2015)

This case is now on appeal to the Federal Circuit and could have wide ramifications. The statute at issue is 35 USC 120.

An application for patent … in an application previously filed in the United States…shall have the same effect… as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application …

The debate between the parties focused on whether a continuation application filed on the issue date of a priority application was filed before the patenting of the priority application. This debate arises out of the USPTO’s interpretation of Section 120, in that the USPTO reads “before” as “not later than.” Judge Andrews found found that such an interpretation contradicts by the ordinary meaning of “before.”

One article states that there are 30,000 priority claims at stake.

ABSTRACT IDEAS IN SOFTWARE AS PATENTABLE
Enfish, LLC v. Microsoft Corp. 2015-1244 (Fed.Cir. 2016)

(This blog covered Enfish in detail here.)

The current Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.

From the case: “Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.”

In other words, is the claimed invention something that makes a computer work better?  If yes, not abstract. Or are computers merely being used to do another task?

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Federal Circuit: Software Not an Abstract Idea—Is Patentable

By Stephen B. Schott

dreamstime_xs_17536982Software patents are alive. Again. Many pundits have been saying it since the Supreme Court’s Alice decision on patentable subject matter in 2014 but there has been little guidance on the topic from the leading courts until now.

On Thursday, the Federal Circuit ruled unanimously that software and data structures were not inherently abstract ideas and were therefore patentable under the Supreme Court’s two-part Alice test. Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016).

The Technology: Self Referential Database

Software and database-related patents have taken a beating in the post-Alice world, so it’s interesting that this case relates to a database, and in particular a self-referential database. To set the technical context, the Federal Circuit explained the more common relational database in contrast to the claimed self-referential one.

With the relational model, each entity (i.e., each type of thing) that is modeled is provided in a separate table. For instance, a relational model for a corporate file repository might include the following tables: document table, person table, company table. The court went on to explain how users and programs populate these tables and relate them to one another through defined relationships between the tables.

 A self-referential database like those described in US Patents 6,151,604  and 6,163,775  at issue, “has two features that are not found in the relational model: first the self-referential model can store all entity types in a single table, and second the self-referential model can define the table’s columns by rows in that same table.”

The Claims in US Patents 6,151,604  and 6,163,775

The Federal Circuit looked at both patents but used the ‘604 patent claim 17 as its example in its analysis:

17. A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.

This claim has two means plus function elements, which means that it incorporates even more limitations into the claim. Means plus functions claims force a court into a two-step inquiry during claim interpretation: (1) identify the function, for example in this claim one function is “indexing a data stored in said table,” and then (2) identify the structure in the specification that performs the function—which is where the additional limitations may be added to the claim itself.

The Federal Circuit’s Analysis

The Federal Circuit, which has been on the wrong side of almost every subject matter case appealed to the Supreme Court, started its analysis by noting that the Supreme Court and Federal Circuit have together grappled with the issues of patentable subject matter, presenting an argument that to an outside observer would almost seem like the two courts are in sync on this topic, contrary to the track record of their differences.

th-enfish-logoThe Federal Circuit introduced the Supreme Court’s Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Unlike the Federal Circuit’s earlier DDR Holdings case that only analyzed the second part of this test, the Enfish court focused solely on the first part.
The Supreme Court has suggested that claims “purport[ ing] to improve the functioning of the computer itself,” or “improv[ing] an existing technological process” might not succumb to the abstract idea exception. While it is true that the Court discussed improvements to computer-related technology in the second step of its analysis in Alice, that was because the Court did not need to discuss the first step of its analysis at any considerable length, (“Petitioner acknowledges that its claims describe intermediate settlement….”).
But then the Federal Circuit offered the quote that will be part of every subject matter case and response to a subject matter rejection for the near future:
We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
 The court then dove a little deeper into the ‘604 patent’s specification to support how the claimed technology improves a computer’s functionality.
The specification also teaches that the self-referential table functions differently than conventional database structures. According to the specification, traditional databases, such as “those that follow the relational model and those that follow the object oriented model,” ’604 patent, col. 1 ll. 37–40, are inferior to the claimed invention. While “[t]he structural requirements of current databases require a programmer to predefine a structure and subsequent [data] entry must conform to that structure,” id. at col. 2 ll. 10–13, the “database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry.” Id. at col 2 ll. 27–29. Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.

 The Federal Circuit went on to note that just because the claimed technology could be run on any general computer, it was not doomed by Alice’s warning that well-known business practices carried out on general purpose computers are unpatentable subject matter. “[T]he claims here are directed to an improvement in the functioning of a computer.”

Practice Notes for Practitioners

Enfish replaces DDR Holdings as the “must-cite” case when prosecuting patents at the USPTO. It avoids Alice’s “substantially more” vagueness as long as the skilled practitioner can convince a court that what is claimed improves a computer’s functionality. Claims and specifications in software-related arts should be carefully crafted with Enfish in mind.

We will keep a watch for any appeal to the Supreme Court.

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April 2016 Patent Law Update

By Stephen B. Schott

dreamstime_s_38780059 2

USPTO Subject Matter Guidelines Updated
If you haven’t seen them, the USPTO published patentable subject matter hypotheticals, with an accompanying analysis. The PTO published these examples last year but recently added more examples that include a focus on bio-related technologies.

Courts Cannot “Factor Out” Functional Elements When Construing Design Patent Claims
Sport Dimension, Inc. v. Coleman Co., Inc. (Fed. Cir. April 2016)
For the 3rd time in a year, the Federal Circuit made it clear that while functional elements in a design patent are not protectable, when construing a design patent claim, courts cannot “factor out” or ignore functional elements as if they don’t exist.

The Court summarized this clearly: “[T]he armbands and side torso tapering serve a functional purpose, so the fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation.”

Patentees Cannot File a Reexamination (or Reissue) to Avoid an Invalidity Judgment
Cardpool v. Plastic Jungle (Fed. Cir. April 2016)

The patentee filed for reexamination of its patent before the district court issued a final judgment. After the district court invalidated the patent’s claims, the USPTO issued a reexamination certificate amending the patent’s claims. The parties jointly moved for the district court to vacate its invalidity judgment but the district court refused and the Federal Circuit affirmed stating, “The Supreme Court counsels that “vacatur must be decreed for those judgments whose review is . . . ‘prevented through happenstance’—that is to say, where a controversy presented for review has ‘become moot due to circumstances unattributable to any of the parties.”

Claim Construction Required Even if Claim Term has Plain and Ordinary Meaning
Clare v. Chrysler Grp. LLC (Fed. Cir. April, 2016)

Even a simple claim term with a plain and ordinary meaning must be construed. Point finale.

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Fitting Software Claims Into Statutory Categories

By Stephen B. Schott

uscodesuppMost patents and applications directed at software frame the claims in terms of processes. This is a safe choice because the US Code that defines patentable subject matter limits the number of categories for what is patentable:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Software, unless it has specific ties to machines, generally falls within the “process” category, if claimed properly. The Federal Circuit elaborated on this in Allvoice Developments US, LLC v. Microsoft Corp. where it decided that certain software claims were not patentable subject matter because they did not fall into one of the above categories.

The patent claims at issue

Specifically, the court considered these two claims:

A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and
audio playback means for playing audio data associated with the recognised words.

A speech-recognition interface that enables operative coupling of a speech-recognition engine to a computer-related application, the interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into a computer-related application to allow processing of the recognised words as input text, including changing positions of the recognized words; and
means, independent of the computer-related application, for determining positions of the recognized words in the computer-related application.

The analysis under Section 101: Are the claims directed to a process, machine, article of manufacture, or composition of matter?

Without much analysis, the court merely stated that the claims were not directed to a process, then considered the other categories: “To be considered a machine under section 101, the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.” Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.”

The court reached this conclusion over the argument from the patent owner “that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to [an article of] manufacture, one of the four categories of patentable inventions.”

The Federal Circuit responded to this by following its own precedent that “instructions, data, or information alone, absent a tangible medium, is not [an article of] manufacture.”

Nonprecedential Opinion

Daffy_DuckThe Federal Circuit can make any opinion nonprecedential, which means that the court considers the opinion to “not add significantly to the body of law.” While parties may cite nonprecedential decisions before the court, the court “will not give one of its own nonprecedential dispositions the effect of binding precedent.” In short, the court doesn’t have to follow the decision, or as Daffy Duck might say (in an exercise that I’ve just discovered is called shm-reduplication), “Rules shmules.”

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The USPTO’s Alice-Based Patentable Subject Matter Hypotheticals with Boilerplate Responses

By Stephen B. Schott

www.masterplaques.comThe USPTO recently published hypotheticals to help guide applicants when defining patentable subject matter. Instead of just a case law review, the office provided claim drafting examples. While not legally binding, these provide a helpful roadmap for practitioners when addressing subject matter rejections. I’ve parsed the hypotheticals below and for each one, provided a sample argument that practitioners might make at the USPTO based on each of the hypotheticals that found claims to be patentable.

Because this is a longer article, I created a summary page of the sample arguments to overcome the USPTO’s subject matter rejections.

Patentable Subject Matter Eligibility Test

The USPTO applied the test that has become well-known following the Supreme Court’s Alice v. CLS Bank case.

Slide1

In each of the hypotheticals, the USPTO applied the three-part test pictured above and summarized below that follows the developing case law on this subject.

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? If no, the claim is does not patentable. If yes, move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? If no, the claim contains patent-eligible subject matter. If yes, go to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? If no, the claim is not patentable. If yes, the claim contains patent eligible subject matter.

Hypothetical 1: Removing Malicious Code From Emails

In this hypothetical, the email scanning operation is done in a quarantined memory sector. The hypothetical claim reads:

1. A computer-implemented method for protecting a computer from an electronic communication containing malicious code, comprising executing on a processor the steps of:
receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a quarantine sector and a non-quarantine sector;
storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is prevented from performing write actions on other memory sectors;
extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic communication, wherein the extracting comprises scanning the communication for an identified beginning malicious code marker, flagging each scanned byte between the beginning marker and a successive end malicious code marker, continuing scanning until no further beginning malicious code marker is found, and creating a new data file by sequentially copying all non-flagged data bytes into a new file that forms a sanitized communication file;
transferring the sanitized electronic communication to the non-quarantine sector of the memory; and
deleting all data remaining in the quarantine sector.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because it is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. The USPTO points out that this solution is inextricably tied to the technology and thus not an abstract idea that fits into the judicial exceptions. Therefore, the claim is patent eligible.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 

This hypothetical is based on DDR Holdings, LLC v. Hotels.com et al discussed in detail here.?????????????????????????????????????????????????????????????????????????

In the patented system, a customer who clicks on an advertising link is not transported from the host web page to the merchant’s web page, but instead is re-directed to a composite web page that combines product information associated with the selected item and visually perceptible elements of the host web page.

The claim is as follows: (The USPTO’s analysis considers two similar claims.)

19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays:
(A) information associated with the commerce object associated with the link that has been activated, and
(B) the plurality of visually perceptible elements visually corresponding to the source page.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because “the claim addresses a business challenge (retaining website visitors) that is particular to the Internet.” The USPTO points out that the claim does not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” quoting the DDR holding. Therefore, the claim is patent-eligible. The USPTO (and Federal Circuit) went on to step 3 and thus it’s worth reviewing as well.
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? The DDR court and USPTO note that “’not all claims purporting to address Internet-centric challenges are eligible, “but in this case these additional limitations amount to more than simply stating “apply the abstract idea on the Internet.” Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 2 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the Internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet.” See also DDR Holdings, LLC v. Hotels.com et al., 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  

?????????????????????????????????????????????????????????????????????????????????????????????????????????????????This hypothetical is based on Research Corporation Technologies, Inc. v. Microsoft Corp.

In the patented method, “the inventor has improved upon previous halftoning techniques by developing an improved mask called a “blue noise” mask. The blue noise mask requires less memory than previous masks and results in a faster computation time while improving image quality. The blue noise mask is produced through an iterative mathematical operation that begins with generating a dot profile with blue noise properties from an image at a 50% gray level using a blue noise filter. Subsequently, additional dot profiles are generated at differing gray levels. As pixels of the dot profile change across the gray levels, these changes are encoded in a cumulative array. Once all the dot profiles are built, the cumulative array becomes the blue noise mask.”

The claim is as follows: (The USPTO’s analysis considers 3 similar claims.)

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.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because “the mathematical operation of generating a blue noise mask is recited in the claim, [and thus,] the claim is “directed to” a judicial exception.”  Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES, for two reasons. First, “tie the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. These steps add meaningful limitations to the abstract idea of generating the blue noise mask and therefore add significantly more to the abstract idea than mere computer implementation.” Second, “the claimed process with the improved blue noise mask allows the computer to use to less memory than required for prior masks, [resulting] in faster computation time without sacrificing the quality of the resulting image as occurred in prior processes [which in turn] produces an improved digital image. These are also improvements in the technology of digital image processing.” Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 3 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor’s ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor’s ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim #] is patentable subject matter.

Hypothetical 4: Global Positioning System

This hypothetical is based on SiRF Technology Inc. v. International Trade Commission.

In the patented system, the systems and methods in which a server wirelessly coupled to a mobile GPS receiver uses a mathematical model to solve for the mobile receiver position without receiving satellite positioning data or absolute time information from a satellite. These systems and methods improve GPS techniques by enabling the mobile GPS receiver to determine its position more accurately and improve its signal-acquisition sensitivity to operate even in weaksignal environments. In particular, the mobile GPS receiver is a mobile device that includes 10 examples: Abstract Ideas GPS antenna, a GPS receiver, a microprocessor, a display, and a wireless communication transceiver. Using mathematical formulas, the device calculates pseudo-ranges (estimated ranges from the GPS receiver to each satellite in view) based on PN codes received from the satellites, and the transceiver sends the pseudo-ranges to the server.

The claim is as follows: (The hypothetical considers 2 similar claims.)

1. A system for calculating an absolute position of a GPS receiver and an absolute time of
reception of satellite signals comprising:
a mobile device comprising a GPS receiver, a display, a microprocessor and a wireless
communication transceiver coupled to the GPS receiver, the mobile device programmed to
receive PN codes sent by a plurality of GPS satellites, calculate pseudo-ranges to the plurality of
GPS satellites by averaging the received PN codes, and transmit the pseudo-ranges, and
a server comprising a central processing unit, a memory, a clock, and a server
communication transceiver that receives pseudo-ranges from the wireless communication
transceiver of the mobile device, the memory having location data stored therein for a plurality
of wireless towers, and the central processing unit programmed to:
estimate a position of the GPS receiver based on location data for a wireless tower
from the memory and time data from the clock,
calculate absolute time that the signals were sent from the GPS satellites using the
pseudo-ranges from the mobile device and the position estimate,
create a mathematical model to calculate absolute position of the GPS receiver based
on the pseudo-ranges and calculated absolute time,
calculate the absolute position of the GPS receiver using the mathematical model, and
transmit the absolute position of the GPS receiver to the mobile device, via the server
communication transceiver, for visual representation on the display.

Following the steps above,

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it’s a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because the claim recites mathematical operations. Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES because the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 4 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

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Four Boilerplate Responses for Responding to Subject Matter Rejections Based on the USPTO Hypotheticals

By Stephen B. Schott

This is a summary of the sample argument sections of a longer article based on the USPTO’s subject matter-based hypotheticals.

Hypothetical 1: Removing Malicious Code From Emails

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 2 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet.” See also DDR Holdings, LLC v. Hotels.com et al, 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 3 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies, Inc. v. Microsoft Corp, 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor’s ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor’s ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim ##] is patentable subject matter.

Hypothetical 4: Global Positioning System

When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 4 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

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