“If you wish to avoid or mitigate potential 101 rejections up front, it might be worth reconsidering the claim language at the outset to avoid potentially problematic interpretations.”
U.S. patent practitioners have had a rocky relationship with the once-straightforward patent eligibility requirement under 35 U.S.C. 101 in recent years. Decisions such as Mayo and Alice upended the status quo, muddying the threshold test for patent subject matter eligibility.
When dealing with difficult 101 rejections under this new status quo, it can sometimes help to think outside of the box about how to overcome a given rejection. This article presents a potential unlabeled “Step Zero” of the Subject Matter Eligibility Analysis which could help you overcome or avoid 101 rejections.
Step Zero
Patent practitioners who regularly work with the kinds of inventions that are often rejected for lack of subject matter eligibility, like computer software, are all too familiar with the steps of the Alice/Mayo analysis. Particularly astute practitioners might recognize that there is another component to the analysis. While not explicitly listed as a step, this part of the analysis can greatly affect the results of the 101 inquiry. In this article, we’ll refer to this component as “Step Zero.”
This Step Zero includes determining the broadest reasonable interpretation (BRI) of the claims. It goes without saying that the claims must always be interpreted in accordance with their broadest reasonable interpretation during examination. However, it is worth noting that there are certain key areas where practitioners could identify new paths to allowance by considering how the claim interpretation affects the 101 calculus.
Claim Interpretation is Key
The U.S. Patent and Trademark Office’s (USPTO’s) Manual of Patent Examining Procedure (MPEP) notes that the broadest reasonable interpretation of the claim must be established at the outset. In this regard, the MPEP states that “It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility.” MPEP 2106(II). The MPEP also notes that claim interpretation “affects the evaluation of both criteria for eligibility.” Id.
With respect to Step 2A, both Prong One (whether the claim recites an abstract idea) and Prong Two (whether the claim as a whole is directed to the abstract idea) can be affected by claim interpretation.
For Prong One, the claim interpretation may affect whether certain claim features are found to recite a judicial exception. For example, with respect to mathematical calculations, the MPEP states that a claim which “recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the ‘mathematical concepts’ grouping. MPEP 2106.04(a)(2)(I)(C). The MPEP provides particular examples of words like “determining” or “performing.” Depending on the interpretation of “determining” or “performing” in a given claim, a step reciting determining or performing could be interpreted as reciting a calculation and therefore found to recite a judicial exception.
Similarly, for mental processes, the MPEP instructs examiners to “carefully consider the broadest reasonable interpretation of the claim in light of the specification” and to “review the specification to determine if the claimed invention is described as a concept that is performed in the human mind.” MPEP 2106.04(a)(2)(III)(C). Depending on the wording of the claims, it may or may not be practically possible to perform certain features in the human mind.
It is also important to note that claim features which are worded so as to include both judicial exception embodiments and patent eligible embodiments can be interpreted as reciting a judicial exception under Step 2A Prong One. This may occur when claim features whose broadest reasonable interpretation encompasses both (1) a version which is a judicial exception as well as (2) a version which is not a judicial exception.
The MPEP provides an example of a nature-based product limitation which covers both a judicial exception embodiment and a patent-eligible embodiment, namely the term “cloned giraffe.” In that example, the term “cloned giraffe” could encompass both a cloned giraffe with markedly different characteristics (i.e., different from a donor giraffe) as well as a cloned giraffe which does not have markedly different characteristics (i.e., a judicial exception). MPEP 2106.04(b)(II) (citing In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1338-39 (Fed. Cir. 2014)). Depending on how the term is defined in the specification, a claim reciting a “cloned giraffe” could reasonably be interpreted as encompassing a judicial exception even if much of the specification discusses a giraffe which would otherwise be patent eligible.
With regard to Step 2A, Prong Two, the MPEP provides an example for demonstrating integration into a practical application using computer improvements. Here, the MPEP states “It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology.” MPEP 2105.05(a)(I) (citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally)).
In other words, if elements in a claim used to establish a computer improvement are recited such that those elements can be reasonably interpreted as possible without a computer, then the broadest interpretation of the claim is not necessarily limited to computer implementations. In that case, the claim might be determined as lacking a computer improvement under Step 2A Prong Two. In such a situation, the claims could be amended to recite more specific computer details in order to limit the claims to computer implementations, thereby ensuring integration into a practical application.
Applying Step Zero
When drafting responses to office actions, it may be a good practice to evaluate your own claims for potential Step Zero issues which could affect the other parts of the analysis. Try thinking objectively about whether your claim really captures the aspects of the invention you plan to highlight in your 101 arguments. If not, it might be worth considering whether to amend the claims in order to explicitly recite the relevant features.
For example, if you want to assert that your claims improve computer processing speed in order to show integration into a practical application under Step 2A Prong Two, consider whether the broadest reasonable interpretation of your claim actually includes the features which realize the improved speed and whether the claim is limited to computer implementations.
Likewise, when drafting applications, it is worth considering how the broadest reasonable interpretation of your initial claims could affect subject matter eligibility. If you wish to avoid or mitigate potential 101 rejections up front, it might be worth reconsidering the claim language at the outset to avoid potentially problematic interpretations. At minimum, it might be worth considering adding support in the specification for alternative framings of claim features which might avoid certain interpretations.
If you are stuck on a difficult 101 rejection, try considering how the examiner’s interpretation at Step Zero is affecting each other part of the 101 analysis. A seemingly minor amendment could avoid major 101 issues rooted in the way the claims are interpreted.
Image Source: Deposit Photos
Author: Panptys
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