Recent Developments in 101 Related Issues:

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By Tatsuo YABE – June 6, 2016

    

 

Starting from Bilski (Sup Ct. 2010), the hurdle of patent eligibility under 101 has been heightened and at the same time becoming rather ambiguous.  A total of 4 Supreme Court Decisions related to patent eligibility have been issued since 2010, including Bilski, Mayo, AMP and Alice.  Mayo decision (Sup Ct. 2012) established the 2 Part Test to determine the patent eligibility in case the claim recites judicially recognized exception.  The test is referred to as Mayo Two Part Test (Part 1 asks whether claim is directed to a judicial exception and Part 2 asks if claim as whole amounts to significantly more than the judicial exception).  Alice (Sup Ct. 2014) applies the Mayo Two Part Test and thus the Mayo test is also referred to as Alice Two part test. However, Mayo’s Test greatly confused Fed. Cir.’s judges in determination of patent eligibility, evidenced by the fact that 10 circuit judges in Alice (Fed. Cir. en banc in 2013) issued 6 different opinions because how to apply “significantly more than judicial exception (Part 2)” was not clear. In fact, the former Chief Judge Rader lamented.

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USPTO issued 101 Exam Guidance in March 2013 in light of Mayo decision.  Because of issuance of Alice decision (Sup Ct 2014), USPTO slightly revised the 101 Exam Guidance and published in December 2014 (2014-12 Exam Guidance).  In the 2014-12 Exam Guidance, Mayo 2 Part Test was illustrated in the form of flowchart in which Step 1 asks i the claim is directed to one of 4 statutory categories (Process/Machine/Manufacture/Composition of Matter); then Step 2A (Mayo’s Part 1) asks if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions); and Step 2B (Mayo’s Part 2) asks if the claim recite additional elements that amount to significantly more than the judicial exception. As USPTO received a quite few number of questions from public, it issued the Supplemental Exam Guidance in July 2015 in which “abstract idea” was defined (rather more than enough examples of “abstract idea” were given) and various hypothetical examples which illustrate application of Mayo Two Part Test were given.

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In May 4, 2016, USPTO issued the Memorandum to the Examiners, which addresses: (i) how examiners should formulate a 101 rejection and (ii) how examiners should evaluate an applicant’s response to such a rejection. Surprisingly, only few days after the May-4 Memorandum, two Federal Circuit’s decisions, namely Enfish case (May 12) and TLI case (May 17), were issued, both of which were authored by judge Hughes. Immediately thereafter (surprisingly quick response: on May 19, 2016), USPTO issued the further Memorandum to the Examiners, which addresses the summary of these two decisions and some effects on determination of Step 2A (Mayo’s Part 2) in which, memorandum says that the examiner may skip the Step 2B (Mayo’s Part 2) analysis when the examiner finds that a claim is directed to improvements in computer-related technology in the Step 2A (Mayo’s Part 1).

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The following table, chronologically (since 2010), summarizes relevant case laws and the 101 Exam Guidance & the Memorandum to the Examiners.  Note that all of 4 Supreme Court Decisions related to patent eligibility are included but not all the relevant Fed Cir’s case laws are included (Only 2 recent Federal Case Laws (Enfish and TLI) are included).

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筆者コメント:

以下の表からも明らかなように101条関連最高裁判決に鑑みてPTO101条審査ガイダンスが作成されるのは理に適っている(寧ろ、PTOとしては最高裁判決が出る度に、101条ガイダンスを見直し最高裁判決との整合性を維持するべく更新しなければならい)。最高裁Alice判決(2014年)後、特許保護適合性(101条)に関するCAFCのパネル判決は数多く出ているが、その度にPTOが審査ガイダンスを更新するというわけではない。但し、先般2つのCAFCパネル判決(2016512日のEnfish判決と517日のTLI判決)が出た数日後にPTOは審査官に対しメモランダムを通知した(2016519日)。当該メモランダムにおいてEnfish判決でのユニーク(特異)な判示事項が盛り込まれた。即ち、STEP 2AMayo Part 1)判断時に、クレームがAbstractアイデアを規定していたとしても当該クレームがコンピューター関連技術に改善をもたらす主題に対するものであると判断される場合には当該クレームはAbstractアイデアに対するクレームではないと判断し、STEP 2BMayo Part 2)の判断をしなくても良いという内容である。

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PTOCAFCのパネル判決に対して機敏にメモランダムを発行するということはない。特にパネル判決が従前のパネル判決に鑑み特異な判示事項を含む場合にはその特異な判示事項を審査官にそのまま伝えるということはしない(2016519日のメモランダムではそれを行った)。 何故なら、そのような特異な判示事項(パネル判決の場合)は今後のパネル判決の集積によって消えてしまう場合があるし、当該特異判示事項とは非整合な判示事項が出る可能性が十分にあるからだ。然るに、今回の2つのパネル判決(Enfish判決とTLI判決)とそれらに鑑みて発行されたPTOのメモランダムは参考レベルに留めておくのが賢明と思料する。

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実務者としては寧ろ上記2つのパネル判決の直前に出されたPTOのメモランダム(201654日)に記載された「出願人の反論に対する評価(以下)」に基づき101条拒絶に反論するのが最も安定的であり且つ安全であると思料する。要は201654日発行のメモランダムは特異な判示事項を含むEnfish事件(2016512日)前に作成されたもので「出願人の反論に対する評価(以下)」の内容は2010年以降の4つの最高裁判決の判示事項に沿うからである。(筆者)

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Evaluating Applicant’s Response:

In response to 101 rejection, applicant may:

     -  Amend the claim to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception and/or (ii) present persuasive arguments or evidence as to why the rejection is in error;

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If Applicant’s claim amendment and/or argument persuasively establish that the claim is not directed to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn;

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Applicant may argue that a claim is eligible because the claim as a whole amounts to significantly more than the judicial exception when the additional elements are considered both individually and in combination. When an additional element is considered individually by the examiner, the additional element may be enough to qualify as “significantly more” if (i) it meaningfully limits the judicial exception, (ii) improves another technology or technical field, (iii) improves the functioning of a computer itself, or (iv) adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application.

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Dates

PTO’s Exam Guidance

Court Decisions

Comment

2010

2010/06/28

 

Bilski v. Kappos (2010-Sup. Ct.)

Method of risk hedging in commodities trading is an abstract idea, thus not patent eligible. Heightened 101 Eligibility Hurdle; MOT (Machine or Transformation) is not a sole Patent Eligibility Test.

2012

 

2012/03/20

 

Mayo v. Prometheus (2012-Sup. Ct.)

Method for finding suitable personal dosage of medicine according to his/her metabolism  is not patent eligible, despite Transformation (MOT test) takes place because it essentially claims a law of nature.  In order for such claim to be patent eligible, claim as a whole must be significantly more than the law of nature (Mayo 2 Part Test)

Mayo Two Part Test:

First:  whether the claim at issue is directed to one of those patent ineligible concepts?

Second: whether the elements of claim contain an inventive concept, i.e., “an element or elements in combination amount to significantly more than a patent on the ineligible concept itself.

2013

2013/05/10

 

Alice v. CLS (Fed. Cir. en banc)

10 judges participated in en banc review.  Applying Mayo-Two Part Test, those judges got so confused (“significantly more than…”) that 6 different opinions were issued.  According to per curium opinion (by 5 judges), all 4 of Alice Patents (method/system/medium claims) are all none patent eligible.

2013/06/13

 

AMP v. Myriad (2013-Sup Ct.)

Isolated DNA (naturally existing thing) is not patent eligible subject matter.

2014

2014/03/14

2014-03 Exam Guidance

 

Based on Mayo Two Part Test, a flow chart was prepared to determine 101 eligibility.

1st Step: Is the claim directed to one of 4 statutory categories (Process/Machine/Manufacture/Composition of Matter)?

2nd Step:  Does the claim recite or involve judicial exception (abstract ideas, laws of nature, natural principles, natural phenomena and natural products)?

3rd Step: Does the claim as a whole recite something significantly different than the judicial exception?

2014/06/19

 

Alice v. CLS (2014-Sup. Ct.)

Affirmed Fed. Cir’s en banc per curium Decision:

Merely adding a generic purpose computer to the abstract idea of intermediated settlement does not make it patent eligible subject matter. Skill of claim drafter does not make patent-ineligible method claim into a patent eligible recording medium or system claim.

2014/12/16

2014-12 Interim Exam Guidance in light of Alice

 

In light of Alice (Sup Ct. 2014), the 2013-03 exam guidance was revised such that the flowchart reads as follows:

Step 1: Is the claim directed to one of 4 statutory categories (Process/Machine/Manufacture/Composition of Matter)?

Step 2A (Mayo’s Part 1 Test):  Is the claim directed to a low of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions)?

Step 2B (Mayo’s Part 2 Test): Does the claim recite additional elements that amount to significantly more than the judicial exception?

2015

2015/07/30

2015/07 Exam Guidance

 

Validity of 2014-12 Interim Exam Guidance was assured.  However, to fill the gaps and supplement to 2014-12 Interim Guidance, examples of “abstract idea” are fully listed and hypothetical examples of compliance and non-compliance of Mayo two part test are given (stepwise analysis was given to each hypothetical example).

 

2016

2016/05/04

2016 5/4 Exam Memo

 

This Memorandum:

- assures validity of both 2014-12 Interim Exam Guidance and 2015-07 Exam Guidance;

-  gives more Hypo Examples (naturally based product and diagnosis method) for illustrating application of Mayo-Two Part Test;

-  makes sure how the examiner formulates a 101 rejection and how examiner should evaluate applicant’s response to the 101 rejection:

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Formulating 101 Rejection:

     -  Identify the judicial exception in the claim and explain why it is deemed an exception (Step 2A);

     -  Identify any additional elements in the claim beyond the judicial exception (Step 2B);

     -  Explain the reason that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception (Step 2B).

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Evaluating Applicant’s Response:

In response to 101 rejection, applicant may:

     -  Amend the claim to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception and/or (ii) present persuasive arguments or evidence as to why the rejection is in error;

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If Applicant’s claim amendment and/or argument persuasively establish that the claim is not directed to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn;

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Applicant may argue that a claim is eligible because the claim as a whole amounts to significantly more than the judicial exception when the additional elements are considered both individually and in combination. When an additional element is considered individually by the examiner, the additional element may be enough to qualify as “significantly more” if (i) it meaningfully limits the judicial exception, (ii) improves another technology or technical field, (iii) improves the functioning of a computer itself, or (iv) adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application.

 

 

 

Enfish (2016-5-12 Fed. Cir.)

Enfish case (Judge Hughes) regards the subject matter eligibility analysis (application of Mayo-Two part test), in particular regarding Mayo Part 1 Test (PTO’s Step 2A), i.e., whether a claim is directed to an abstract idea.  In short, Enfish court says that when claim recites software elements, if the focal points of the claim is on improvement of computer related technology, as opposed to abstract idea, the claim is considered not directed to an abstract idea (“No” to the Mayo Part 1 Test) and then Mayo Part 2 Test can be skipped (i.e., “claim as a whole significantly more than abstract idea?”).

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- The Enfish’s patent claims at issue recite steps of configuring a computer memory in accordance with “a self-referential table”, some of the claimed terms are drafted in Means + Function form, invoking 112(6) interpretation (reading the corresponding features into the M+F terms).

- The court asked whether the focus of the claims is on the specific improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an abstract idea for which computers are used as merely a tool.

-  To determine whether the claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification (because the claim terms are written in Means-Plus-Function).

- The court identified the claimed invention achieves other benefits over conventional database, such as increased flexibility, faster search times and smaller memory requirements.

- The court states that the Enfish claims are not the ones in which general-purposed computer components are added after the fact to a fundamental economic practice or mathematical equation but were directed to a specific implementation of a solution to a problem in the software arts, thus the Enfish claims are not directed to an abstract idea (Mayo Part 1 Test: PTO’s Step 2A).

-  The court states that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract (Mayo Part 1 Test: PTO’s Step 2A).

-  Software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract.

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- However, the court recognizes that there may be close calls about how to characterize what the claims are directed to in some other computer-related claims.  In such cases, an analysis of whether there are concrete improvements in the recited computer technology could take place under Mayo Part 2 Test (PTO’s Step 2B).

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Rantanen (Law Prof. at Univ. of Iowa) cautioned Fed Cir’s heavily reliance on Enfish decision in the future. Patentlyo 2016-05-23

 

 

TLI (2016-5-17 Fed. Cir.)

The same judge (Hughes) wrote the opinion concurrently with Enfish.

-  TLI’s claims describe steps of recording, administrating and archiving digital images.

-  The court finds the claims to be directed to the abstract idea of classifying and storing digital images in an organized manner (Mayo Part 1 Test: PTO’s Step 2A).

-  The court then finds that the additional elements of performing these functions using a telephone unit and a server did not add significantly more than the abstract idea (Mayo Part 2 Test: PTO’s Step 2B).

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2016/05/19

2016 5/19 Exam Memo

 

In light of Enfish and TLI cases, this memorandum adds:

-  2014-12 Interim Guidance, 2015-07 Guidance, and 2016-05-04 Memo are still valid;

-  Brief summary of Enfish case and TLI case (as PTO cannot expect all the examiners to review those case laws);

-  Enfish and TLI cases affect the analysis of Step 2A.

-  In light of Enfish, the examiner may determine that a claim directed to improvements in computer-related technology is NOT directed to an abstract idea under Step 2A without the need to analyze the additional elements (significantly more) under Step 2B.

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