January 11, 2019Client Alert

New USPTO Guidance for Software Inventions - Foreshadowing a New Kind of Rejection?

On January 7th, 2019, the United States Patent and Trademark Office (USPTO) issued the 2019 Revised Patent Subject Matter Eligibility Guidance (Revised 101 Guidance) to address changes in examination procedure for subject matter eligibility. At the same time, the USPTO also issued the Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 guidance (112(f) Guidance) to reinforce the examination procedure for computer-implemented functional claim limitations. The Revised 101 Guidance is welcome. Many Applicants have found navigating Section 101 issues difficult and have asked the USPTO for additional clarification. However, the rationale for issuing the 112(f) Guidance is less clear, as Applicants had, in general, not seen an increase in such rejections. In addition, Section 112(f) issues have not featured prominently in recent court decisions, particularly in comparison to the number of recent decisions dealing with Section 101 issues. The issuance of the 112(f) Guidance could foreshadow an increase in Section 112(f) rejections. Summaries of the Revised 101 Guidance and the 112(f) Guidance are provided below.

In the Revised 101 Guidance, the USPTO modified its position on how to apply Step 2A of the Alice test (Revised Step 2A). The Revised Step 2A requires an Examiner to determine: 1) whether the claim recites a judicial exception, and 2) whether a recited judicial exception is integrated into a practical application. An Examiner will only proceed to Step 2B of the Alice test when the Examiner determines that the claim recites a judicial exception that is not integrated into a practical application. The USPTO also clarified that a judicial exception must fit one of the following categories: 1) mathematical concepts, 2) certain methods of organizing human activity, and 3) mental processes, although the USPTO leaves open the possibility of other abstract ideas that do not fall into these three categories.

In the Revised 101 Guidance, the USPTO takes a different perspective of what is meant by “directed to” a judicial exception. Under the old Step 2A, “directed to” a judicial exception simply meant that a judicial exception “exists” in the claim. However, under the Revised Step 2A, “directed to” a judicial exception means a judicial exception “exists” in the claim and is not integrated into a practical application that is also recited in the claim. The USPTO further clarifies that determining whether the subject matter of the claim is “integrated into a practical application” includes assessing a claim for the presence of:

  • an element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
  • an element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  • an element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
  • an element that effects a transformation or reduction of a particular article to a different state or thing; and
  • an element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

The USPTO notes that an assessment of a claim including “well-understood, routine, [or] conventional activity” should not be brought into the Revised Step 2A analysis because a claim that includes conventional elements may still integrate an exception into a practical application, which satisfies the subject matter eligibility requirement under Section 101. Instead, the “well-understood, routine, [or] conventional activity” is left to Step 2B of the Alice test.

In summary, the USPTO now requires an Examiner to determine whether a judicial exception in a claim is integrated into a practical application. This new requirement may lead to a reduction in Section 101 rejections.

Moving to the 112(f) Guidance, Section 112(f) permits Applicants to claim an invention in terms of the function it performs rather than the structure it contains. For example, Applicants may recite claim elements in a “mean plus function” format. The section 112(f) Guidance confirms a long-standing legal principle that use of the word “means” creates a presumption that Section 112(f) applies. However, Section 112(f) may apply to a claim element even if the word “means” is not used. In the 112(f) Guidance, the USPTO reiterated the standard for assessing whether functional elements of a claim should be interpreted under Section 112(f). The standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. When a claim term lacks the word ‘means,’ the presumption [that Section 112(f) does not apply] can be overcome and [Section 112(f)] will apply if an Examiner demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” The USPTO also provided examples of non-structural generic placeholders that may invoke Section 112(f), namely, “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”

When elements of a claim covering a computer-implemented invention are interpreted under Section 112(f), the USPTO reiterated that the claimed computer functions may be indefinite under Section 112(b) unless there is an algorithm described in the specification that supports the claimed computer functions. When a computer-implemented invention is not interpreted under Section 112(f), the USPTO reiterated that the computer-implemented invention and the claimed computer functions will still be evaluated under the written description and enablement requirements of Section 112(a).

There are a number of practical pointers for Applicants to consider in view of the new guidance provided by the USPTO. First, Applicants should insist that Examiners and the Patent Trial and Appeal Board re-evaluate the 101 rejections to comply with the Revised 101 Guidance. Second, if a Section 101 rejection under the Revised 101 Guidance is made final, differs significantly from the old Section 101 rejection, and Applicants did not make any amendments that necessitated a new rejection, Applicants should argue the finality of the Section 101 rejection is improper because the Section 101 rejection under the Revised 101 Guidance is effectively a new rejection that was not necessitated by Applicants’ amendments. Third, if possible, Applicants should highlight the practical application in each claim, and connect the practical application to an improvement described in the specification. Fourth, Applicants should be aware of using claim terms that do not connote structure, which allows for interpretation of claim elements under Section 112(f). Lastly, Applicants should endeavor to fully describe and illustrate the algorithms that are used in their computer-implemented inventions to help avoid non-compliance with Section 112(a) and Section 112(b).

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