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Dos and Don’ts for Section 101 at the USPTO

Dos and Don’ts for Section 101 at the USPTO

The USPTO has recently released two sets of examples to clarify the December 2014 Guidelines. The interim guidelines, related court decisions and the example sets can all be downloaded here.

The purpose of this post is to provide a short summary of what is supposed to work (or not work) in terms of meeting the subject matter eligibility requirements of § 101.

The do list:

1) Avoid abstraction by focusing the claim on a real world result. For example, a hypothetical method of protecting a computer from viruses focused on “isolation and extraction of malicious code contained in an electronic communication” is a real world result according to Office policy. In addition, the Office views this subject matter as “inextricably tied to computer technology”.

2) Avoid abstraction by reciting an active process in the claim. In an example based upon the 2014 CAFC decision in DDR Holdings, LLC v.Hotels.com et al. the Office explains that the claim directed to “automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements” are not abstract because they do not recite a mathematical algorithm and do not recite a fundamental economic or longstanding commercial practice. The Office, in accord with the CAFC, views this subject matter as a business challenge (retaining website visitors) that is particular to the Internet (i.e. inextricably tied to computer technology) .

3) Claim making the computer itself work better. In an example based upon the 2010 CAFC decision in Research Corporation Technologies Inc. v. Microsoft Corp the Office indicates that generating a blue noise mask followed by comparing the blue noise mask to a gray scale image to transform the gray scale image to a binary image array and converting the binary image array into a halftoned image ties the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. The Office concludes that the steps recited in addition to the blue noise mask improve the functioning of the claimed computer itself by allowing the computer to use less memory than required for prior masks, resulting in faster computation time without sacrificing the quality of the resulting image, and producing an improved digital image.

4) Mention portions of the device other than a processor (CPU) and memory in the claim. In an example based upon the 2010 CAFC decision in SiRF Technology Inc. v. International Trade Commission the Office indicates that recitation of a mobile device comprising a GPS receiver, microprocessor, wireless communication transceiver and a display that receives satellite data, calculates pseudo-ranges, wirelessly transmits the calculated pseudo-ranges to the server, receives location data from the server, and displays a visual representation of the received calculated absolute position from the server provides significantly more than abstract mathematical operations. The Office Explains 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. This is related to making the computer itself work better as in (3) with the difference being that the improved performance is at least partly due to the presence of additional hardware components.

5) Show that what is claimed is markedly different from what occurs in nature (I). In a hypothetical example a claim directed towards gunpowder (an intimate finely-ground mixture of 75% potassium nitrate, 15% charcoal and 10% sulfur ) is found to be patentable by the Office because the claimed combination does not occur in nature and none of the components (which occur singly in nature) are explosive. This is an interesting position for the office to take because the “explosive” quality of the combination is not recited explicitly in the claim.

6) Show that what is claimed is markedly different from what occurs in nature (II). In a hypothetical example a claim directed towards pomelo juice and an effective amount of an added preservative is found to be patentable by the Office because the claimed combination does not occur in nature and the combination is different from pomelo juice without preservative in that addition of the preservative extends shelf like from days to weeks. As in (5) this is an interesting position for the office to take because the quality of the combination relied upon is not recited explicitly in the claim.

7) Recite chemical modifications of naturally occurring substances. In a hypothetical example a claim directed towards “purified amazonic acid” (isolated from a plant) is deemed ineligible while claims directed towards 5-methyl amazonic acid and towards Deoxyamazonic acid are deemed eligible. The clear distinction here is a difference in chemical structure, whether or not the structure results in any functional difference. The Office emphasizes that these claims to chemical variants do not prevent others from using, naturally occurring amazonic acid.

8) Recite naturally occurring substances in combination with other substances. In the “amazonic acid” hypothetical example a claim directed towards a pharmaceutical composition comprising: a core comprising amazonic acid; and a layer of natural polymeric material enveloping the core. Is deemed patentable because it is both structurally and functionally different than the components taken singly. Likewise, stable aqueous compositions of amazonic acid are deemed patentable because addition of a solubilizing agent transforms the naturally insoluble amazonic acid to a dissolved state.

9) Avoid pre-emption of all possible uses of products of nature. In the “amazonic acid” hypothetical example claims directed towards and to specific treatment methods which employ amazonic acid are deemed patentable because they are not directed to the naturally occurring product per se but to specific uses of the product.

10) Recite markedly different characteristics from the natural product. The “marked differences” do not necessarily require changes in biological/pharmacological function or chemical/physical properties. In a hypothetical example “antibiotic L” as a natural product has a hexagonal-pyramid crystal form and bacillosamine N-glycan on residue 49. The specification discloses ways to produce antibiotic L with a tetrahedral crystal form and/or with mannose N-glycan on residue 49. Claims directed to antibiotic L are deemed patentable so long as they require at least one of these two distinguishing characteristics.

11) Claim function. In a hypothetical example modeled after the Diamond v. Chakrabarty, Supreme Court decision, claims that require two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway in a singlePseudomonas bacteria are deemed patentable. The reason is that combination of the two plasmids provides a different functional characteristic to the bacteria.

The don’t list:

1) Don’t relate exclusively to data manipulation. In an example based upon the 2014 CAFC decision in Digitech Image Tech., LLC v.Electronics for Imaging, Inc., the Office indicates that a method of generating first data and second data using mathematical techniques and combining the first and second data into a device profile is not § 101 eligible subject matter because it describes only gathering and combining data by reciting steps of organizing information through mathematical relationships. The gathering and combining merely employ mathematical relationships to manipulate existing information to generate additional information.

2) Don’t claim mental steps. In an example based upon the 2014 CAFC decision in Planet Bingo, LLC v. VKGS LLC, the Office indicates that a claim reciting program elements that describe the steps of managing a game of Bingo is not § 101 eligible subject matter because these steps can be performed mentally or in a computer.

3) Don’t claim fundamental economic practices. In an example based upon the 2014 CAFC decision in buySAFE, Inc. v. Google Inc., the Office indicates that a method reciting steps of creating a contract, including receiving a request for a performance guaranty (contract), processing the request by underwriting to provide a performance guaranty and offering the performance guaranty describes the creation of a contractual relationship, which is a commercial arrangement involving contractual relations similar to the fundamental economic practices found by the courts to be abstract ideas in Bilski.

4) Don’t rely on field of use limitations. In an example based upon the third CAFC decision (2014) in Ultramercial v. Hulu and WildTangent, the Office indicates that an eleven step process for displaying an advertisement in exchange for access to copyrighted media describes the abstract concept of using advertising as an exchange or currency. The addition of limitations that narrow the idea, such as receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad do not make it less abstract. Recitation of additional limitations such as accessing and updating an activity log, requiring a request from the consumer to view the advertising, restricting public access, and using the Internet as an information transmitting medium do not add “significantly more” to the abstract idea.

5) Don’t claim mixtures with no added functional characteristic. In a hypothetical example modeled after the Funk Brothers Seed Co. v. Kalo Inoculant Co. Supreme Court decision, a claim directed towards an inoculant for leguminous plants comprising a plurality of selected mutually non-inhibitive strains of different species of bacteria of the genus Rhizobium, said strains being unaffected by each other in respect to their ability to fix nitrogen in the leguminous plant for which they are specific is deemed §101 ineligible because the mixture does not have markedly different characteristics from what occurs in nature.

6) Don’t claim nucleic acid sequences that occur in nature. Isolation of a nucleic acid sequence is no longer sufficient for §101 patent eligibility. Remedies for this problem include requiring at least one modification (substitution, deletion or addition), requiring presence of a label on the sequence and specifying combination with another sequence (preferably a heterologous sequence).

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