In its first response to last year’s landmark patent eligibility decision, Alice Corp. v. CLS Bank,[1] the United States Patent Office (“PTO”) pointed out that “an invention is not rendered ineligible simply because it involves an abstract process.”[2] Even in light of Alice Corp., all that is needed to overcome the abstract idea exception is for an invention to “integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way.”[3] Hope springs eternal, right?
A year later, the PTO provided more rose-colored guidance: “even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim.”[4] For example, “courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic.”[5] The PTO buttressed its guidance with specific examples, including Example 3 (digital image processing), 23 (GUI for relocating obscured textural information), and 25 (rubber manufacturing).[6]
In Example 25, the allowed claim contained a mere formula “that could be performed mentally”[7] and had “long been used”[8] in rubber manufacturing. And the other steps, if performed alone, were well known and did not add “significantly more.” But the claimed process was eligible because it did not “merely link [the equation] to a technical field, but add[ed] meaningful limitations on the use of the mathematical relationship by specifying the types of variables used (temperature and time), how they are selected (their relationship to the reaction time), how the process uses the variables in rubber molding, and how the result is employed to improve the operation of the press.”
Last week, however, the Patent Trial and Appeal Board issued what initially appears to be a much narrower ruling — possibly irreconcileable with the above guidance. Part II will examine this opinion and what it might mean for patent practitioners.
[1] 573 U.S. __, 134 S. Ct. 2347 (2014).
[2] Andrew H. Hirshfeld, Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. v. CLS Bank International et al. (June 25, 2014).
[3] Id. (emphasis supplied).
[4] July 2015 Update: Subject Matter Eligibility, Section 1, page 2.
[5] Id, at Section IV, page 7.
[6] Id.
[7] July 2015 Update Appendix 1: Examples, at page 15, lines 1-2.
[8] Id., at page 15, Background.