USPTO Eligibility Examination Practice

Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG).  On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”

[January 2019 PEG][October 2019 UPDATE]

The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and Mental Processes.  Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas” except in “rare circumstance.”  Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”

The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:

(I) What does it mean to “recite a judicial exception?”

  • Answer: “recite” includes implicit “description”  in the claim;
  • See examples 37-46

(II) Can you further define the abstract idea “groupings?”

  • Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations
  • Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);
  • Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process.

(II) Extended – What if an examiner thinks that a claim recites an abstract idea that doesn’t fit in the grouping?

  • Answer: this must be approved by the TC Director!

(III) How to know if the recited judicial exception is integrated into a practical application? (Still under Alice Step 1)

  • Answer: Ask whether the claim recites “additional elements that integrate the judicial exception into a practical application.”
  • Example: A claim whose “additional limitations reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field.”
  • In understanding whether a practical technical improvement is claimed, examiners are told to look to the specification for “sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.”  A patent will likely fail here if the specification recites the practical tech in conclusory form.

(IV) How does an examiner establish a prima facie case of ineligibility?

  • Inter alia, Examiners should identify the particular claim limitations that recite an abstract idea and explain its grouping.  Examiners need not provide “evidence” beyond an explanation.

[Read it here] We’ll do a series on this over the next several days.

29 thoughts on “USPTO Eligibility Examination Practice

  1. 3

    “Mental Processes can include claims that require a computer”

    Say what?

    What would such a “mental process” category claim look like?

    1. 3.1

      A system for selecting a restaurant comprising:
      one or more processors configured to:
      collect information relating to one or more restaurants, the information comprising product information and pricing information;
      evaluate the product information;
      evaluate the pricing infotmation; and
      selecting a restraunt to patronize based on the evaluations.

      1. 3.1.1

        Thanks Ben — but since all the steps are performed by the processor (and not in / by the mind), this seems eligible to me.

        1. 3.1.1.1

          It is strange, Pro Say. The anti-patent judicial activists/propogandists have so muddled patent law that the minions constantly regurgitate their nonsense. They mix eligibility with novelty/enablement/obviousness issues. And they sit in judgement over the invention. They believe their hindsight reasoning about whether an invention is “easy” or not is what should rule patent law.

          This group of people are about denigrating our civilization for their monetary gain.

          An apparatus, the apparatus comprising:
          a first piece of wood approximately 4 feet wide, 20 feet long, and 1 foot thick; and
          a second piece of wood joined to the first piece of wood, the second piece of wood approximately 1 foot wide, 2 feet long, and 1 foot thick, and joined to the first piece of wood.

          Now, the judicial activists/propogandists would say this is ineligible because it is so simple. Any person that actually understands patent law would say it is eligible.

        2. 3.1.1.2

          I wasn’t trying to persuade you of their ineligibility but to provide you with an example.

          The key is that the steps as described CAN be performed in the human mind. If the ‘select’ step included a SVD decomposition or some other calculation not practically performable with pen and paper, then under PTO policy it would not be interpreted to recite a “mental process”.

          1. 3.1.1.2.1

            The key is that the steps as described CAN be performed in the human mind

            What the “F” are you doing being an examiner?

            1. 3.1.1.2.1.1

              Deener the steps could have been performed by the body of human.

              anon, it is just mad denning to read the never ending nonsense.

              It is all so simple.

          2. 3.1.1.2.2

            Complying with PTO policy.

            1. 3.1.1.2.2.1

              Ben,

              Your posts show that you just do not understand PTO policy.

              Seriously, this is NOT a new thing for you.

              1. 3.1.1.2.2.1.1

                Every SPE and TC director at the PTO would read the claim in post 3.1 as “directed to a mental process” under Prong 1 of the Iancu test. If you disagree (which I cannot be sure of as this is yet another instance of you avoiding taking any clear position), you are mistaken and should avoid advising anyone on this subject.

                1. My position is clear: your statement of “can be” is wrong in its painful over-simplification.

                  As for “another instance of you avoiding,” do you really want to compare items avoided? That won’t come out well for you.

                2. Still not clear whether you agree that 3.1 would be “directed to a mental process” under Office policy.

                3. Maybe instead of trying to over-read what I state, or try to misconstrue my words to some other item, you should pay attention to the actual statements.

                  That way, you won’t have to backtrack from false accusations, or appear to be an inattentive clod.

                4. Still not clear whether you agree that 3.1 would be “directed to a mental process” under Office policy.

                  I know that admitting that I’m correct that 3.1 is “directed to a mental process” under current Office policy would undermine your argument, but maybe you should look for a way to deal with that fact rather than run away from it.

                5. I just noticed that you complained about me miscontruing your words without explaining the correct construction.

                  Unintentional failure to communicate clearly, or habitual practice of wasting time to pad the bills? I’m guessing the latter.

                6. Your feelings – and misunderstandings — coupled as they are with projected bad intent (nowhere substantiated) are noted.

                  (the correct construction was not only plain in its first instance, that correct construction was corroborated at the 12:28 pm post).

                  Unclench your eyes Ben and seek out more than that which provides your own special confirmation bias.

  2. 2

    Seems to mostly be a roadmap of arguments for practicioners to avoid. Don’t fight Prong 1 on the basis of it not being explicitly recited in the claims. Don’t say your abstract idea is “integrated” on the basis of its specificity. Etc.

  3. 1

    “Technology”? “Technical field”?

    Is there a definitions section somewhere?

    What does “abstract” mean?

    Seems like the PTO should tell us. Maybe someone should call David Boundy.

    1. 1.1

      Same questions to the Supreme Court…

      Oh wait, someone has already put that on the table (like, years ago).

      1. 1.1.1

        What definitions do you propose?

        1. 1.1.1.1

          I propose sticking to the words of Congress and not having to mess with the ultra vires judicial branch meddling.

          1. 1.1.1.1.1

            ROTFLMAO

            Like nobody can see you running away with your f e c e s dripping down your leg.

            1. 1.1.1.1.1.1

              You misunderstand the notion of “running away” and confuse proper respect for observing separation of powers with your own desire to have your Ends no matter what the Means.

              (the f e c e s present is on you)

      1. 1.2.1

        …some quantum…?

        That impugns ALL utility in the patent sense.

        Let me know when you are willing to understand the terrain that you want to play on.

      2. 1.2.2

        Abstract means some quantum of meaning drawn from a human mind

        The benefit of an internal combustion engine is that, by harnessing its motive force, humans can travel from one location to another. That benefit, of course, lies in the human desire to be elsewhere. Accordingly, internal combustion engines are abstract and ineligible for patenting. ;)

        How about “solely drawn from a human mind”?
        But we’d still have to quibble about what a “quantum of meaning” is.

        1. 1.2.2.1

          No human mind, no abstraction.

          No human mind, internal combustion still occurs in an existing engine.

          1. 1.2.2.1.1

            …stop lights.

            You STILL have the same problem, Marty — you refuse to understand the patent sense of utility and that a human mind MUST be in the loop in order for utility to be understood, recognized, and rewarded.

          2. 1.2.2.1.2

            …to put it another way Marty, without human minds there would be NO internal combustion engine.

            You want patent law to have NO nexus between the human mind (absolute zero ‘quantum of meaning drawn from’), and yet cannot seem to grasp that ALL inventions under the patent law MUST have that critical ‘quantum.’

            Anything — and I do mean absolutely anything — that derives utility (in the patent sense) WITHOUT the human mind has no connection with patent eligibility. It is NOT just “the hand of man” that is to be evidenced, but it is the mind of man that drives that hand that is a critical point to accept.

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