In Eligibility Doctrine – What Claim Elements do you Ignore?

by Dennis Crouch

Thomas v. Iancu (Supreme Court 2020)

Doug Thomas is a silicon valley patent attorney at a small (and thriving) firm. Thomas is also a prolific inventor and entrepreneur. In April 2020, I wrote about the Federal Circuit’s opinion affirming a USPTO rejection of his claimed method of “notifying users having patents of subsequent publications that reference the patents.”  The April decision was one of four cases that he has brought to the Federal Circuit:

  1. In re Thomas, Appeal No. 17-1100 (November 17, 2017) (Affirming anticipation rejection for Application No. 12/878,19–method for creating an electronic document using a word processing program).
  2. In re Thomas, Appeal No. 17-1149 (December 13, 2017) (Affirming rejection for Application No. 13/099,285 without opinion– managing computer
    temperature by measuring temp and changing fan speed) [ThomasThermalTemp].
  3. In re Thomas, Appeal No. 19-2053 (March 5, 2020) (Affirming 101 rejection for Application No. 11/253,299 without opinion–method for producing an online survey).
  4. In re Thomas, Appeal No. 19-1957 (April 8, 2020) (Affirming 101 rejection of method for notifying users of publications that reference their patent). See, Dennis Crouch, Patenting the Patenting Process, Patently-O (April 8, 2020).

Thomas now filed a petition to the Supreme Court in the third case (the ‘299 application) that was rejected for lack of eligibility. Thomas writes the question as follow:

Contrary to Congress’ directives and this Court’s guidance, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) fabricated legal theories to unfairly discriminate against software innovations. The Federal Circuit incorrectly held that the Patent Trial and Appeal Board of the United States Patent and Trademark Office (“USPTO”) did not commit legal error when, under the guise of following the framework provided in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (so called “Alice/Mayo framework”), it (i) excessively abstracted the claims, and (ii) ignored claim limitations that were found to be nonobvious when concluding that the claims lacked an inventive concept. The questions presented are:

1. Whether software innovations, simply because they are implemented on a general purpose computer, are ineligible for patenting unless they claim some hardware limitations beyond a general purpose computer that provide an improvement to computer technology.

2. Whether, contrary to Diehr, claim limitations can be ignored, under the guise of the Mayo/Alice framework, when a claim is evaluated for presence of an inventive concept, even when the ignored claim limitations were found to be nonobviousess.

Thomas Petition. The basic thrust of the petition is that innovative engineering solutions do not require a new physical technological component — and that the claimed creation of online documents should be treated as eligible.

The petition goes on to argue that the abstract idea exception should be eliminated or severely curtailed:

The time has come for this Court to reevaluate the abstract idea exception to Section 101. This exception is entirely a judicial creation, having no basis in the text of the statute. The Court should undertake to implement Section 101’s broad and explicit language. Thus, where, as here, the patents claim a “new or useful process” or new and useful improvement to a process, the inventions should be eligible under Section 101 as Congress intended based on the language of that provision.

Id. The 15-step method claim at issue is listed below — directed to a method for producing an online survey:

20. A method for producing an on-line survey through interaction with a remote server from a network browser operating on a client computer associated with a requestor of the online survey, the network browser and the remote server capable of communicating via a data network, said method comprising:

(a) requesting initial survey remarks to be provided for the on-line survey;

(b) receiving, at the remote server, the initial survey remarks from the survey requestor;

(c) requesting identification of one or more participant groups from a plurality of available participant groups;

(d) receiving, at the remote server, selection from the survey requestor of one or more participants groups from the plurality of available participant groups;

(e) requesting at least one survey question;

(f) receiving, at the remote server, at least one survey question from the survey requestor;

(g) requesting an answer format for the at least one survey question;

(h) receiving, at the remote server, the answer format from the survey requestor;

(i) receiving content for at least one answer choice for the at least one survey question;

(j) repeating (e) – (i) for one or more additional survey questions;

(k) requesting subsequent survey remarks to be provided for the online survey;

(l) receiving, at the remote server, the subsequent survey remarks from the survey requestor; and

(m) producing, at the remote server, the on-line survey to include the initial survey remarks, the survey questions, the answer choices corresponding to the survey questions and the answer format utilizing the answer formats, and the subsequent survey remarks;

(n) providing and storing the on-line survey in an electronic manner to an Internet-based survey manager that hosts the on-line survey; and

(o) thereafter inviting a plurality of survey participants that are classified to be within the selected one or more participant groups to take the on-line survey by interaction with the Internet-based survey manager.

The application here claims priority back to a 1996 provisional application filed by Thomas. The provisional was followed by a non-provisional application that was prosecuted for 8 years before being abandoned following a Board decision affirming an obviousness rejection. (At the time, the process only had steps a-f). At that time, Thomas filed the present continuation and prosecution kept going for 15 more years.  Much of this time has been occupied by two appeals. The first appeal was actually successful with the examiner being reversed with the Board finding no prima facie case of obviousness. [11253299 First Board Decision].  However, by that time Alice had been released and the examiner added the new eligibility rejection.

29 thoughts on “In Eligibility Doctrine – What Claim Elements do you Ignore?

  1. 4

    Section 101 is a defective statute, because every human activity can be reasonable described as a “process”. Since we know every human activity can’t be eligible for patenting, the word “process” is impossibly vague and requires some limitation.

    The common law chose abstraction as one of those limitations, but unfortunately, the concept of abstraction is impossibly vague and requires some limitation. Alice can never work until abstraction is meaningfully defined for eligibility purposes or the exception is written out of the common law, which means 101 has to go or be rewritten.

    To me, its very very simple. No human mind= no abstraction.

    The use of a human mind to achieve utility of an invention is not a sufficient nexus. The utility of the process must arise from the consumption of the abstraction. If a machine uses information to do something, that information is a machine component and not an abstraction. If a human being consumes information to do something useful, that information is absolutely abstract and should be beyond the reach of patent law.

    1. 4.1

      [ S I G H]

      Your views adhere ONLY if you try (and try and try and try) to ignore the terrain known as patent law — a legal terrain.

      You talking about “The common law chose…” is beyond funny.

      What ‘to you’ is very very simple REMAINS out of bounds because you just have not bothered to understand the terrain, and think that your personal feelings ‘have meaning.’

      They do not.

  2. 3

    Doug: A top-notch petition including an excellent eligibility historical retrospective.

    If no one else’s does first; may yours be the case that spurs SCOTUS to restore patent protection to all areas of innovation (at a bare minimum setting the CAFC and Patent Office straight on the proper use and application of the Mayo / Alice framework.

    Your claims have always been eligible.

  3. 2

    “Whether, contrary to Diehr, claim limitations can be ignored, under the guise of the Mayo/Alice framework, when a claim is evaluated for presence of an inventive concept”

    It’s amazing that we’re still arguing about what counts in Step 2B, 6 years after Alice.

    1. 2.1

      It is amazing–not. Sad is what it is.

      Injustices will not stand.

      (But then your little tr oll remark is typical.)

      1. 2.1.1

        “Injustices will not stand.”

        That’s a interesting thing to say for someone who presumably feels that there are hundreds of patents that have been unjustly invalidated. How do you see those injustices being corrected? On what timescale? Back in 2015, would you have expected Alice to remain the law in 2020?

        1. 2.1.1.1

          I like any attorney worth their salt knew that Alice was a load of hooey.

          It will never be stable law. It will never be accepted.

    2. 2.2

      Alice — in and of itself, is logically unsound. It would be far more troubling if there were no arguments about Alice (at any point in time).

  4. 1

    “The application here claims priority back to a 1996 provisional application filed by Thomas.” That is already almost a quarter century ago of PTO pendency!
    Another disgraceful example of PTO docket control and examiner management failures to handle patent applications in their actual original specification filing date order. The PTO is apparently still producing “submarine” patents to spring by surprise on years of products by U.S. manufacturers.
    BTW I doubt if the Supremes will be impressed by a crude hand-drawn “black boxes” spec.

    1. 1.1

      Why count from 1996 when 9 years of this total is due to the applicant’s continuation? The PTO was a little slow to take up this case once it was filed (~3 years), but what else should the PTO have done faster?

      1. 1.1.1

        Yes, but all the RCEs and appeals increase delays by applicants can only cause such a GROSS pendency only if they are not acted in in proper order by the PTO. Taking 3 years to even act on a continuation, and the other PTO delays, are not just “a little slow” for an application that has already been pending for many years! In any well run legal system such an old case would go to the top of the case pile, and receive attention and admonishments to act on it first and promptly, NOT get put under a pile of work while other much later filed cases get worked on instead.

        1. 1.1.1.1

          delays by applicants can only cause such a GROSS pendency only if they are not acted in in proper order by the PTO. Taking 3 years to even act on a continuation, and the other PTO delays, are not just “a little slow” for an application that has already been pending for many years!

          If applicant was concerned about time then applicant could have simply continued prosecuting the parent rather than abandoning it. You talk about the three year delay as if it wasn’t something the applicant wanted. I showed down below how all 12 years of examining of the child involved zero PTO delays.

          If the office took up the case immediately the applicant could have simply waited the full six months before responding, or could have (at least under current procedure) requested a delay in examination. And guess what? He could have continued again rather than taking the case up through appeals.

          So to be clear – if the office had acted on the continuation immediately and this case was only pending for 22 years, you’d be happy with that? And if the applicant then RCEd once more and taken the full six months in between to get back up to 25 years, you’d be fine with that too? Are you sure your problem isn’t with private parties exploiting a flawed GATT statute and not with the office?

          1. 1.1.1.1.1

            You missed the point there, Random – and not by a little.

            This has nothing to do with “the Applicant [being] concerned.”

            So to be clear, maybe you should not try so hard to miss the point.

    2. 1.2

      The current application is the only one published, but it wasnt fully filed till dec 2005, first examined in 2008, and there was never more than three months between applicant filing and the examiner responding. Examiner never did a second non-final except when it was withdrawn from issue following Alice. The length of time was largely due to four RCEs and multiple appeals.

      I think you misunderstand the ability of the applicant to stall proceedings, but regardless I don’t think the pendency of examining is all that long. A continuation is pending nearly 25 years after the original, but that is following at least five rounds of appeals/non examination (sct, cafc, appeal of Alice, withdraw from allowance, appeal of obviousness, plus any appeals on the original).

      The examiner lost obviousness because even though the prior art had computers making surveys, and had the internet, and had the internet used to distribute online surveys, it did not have *producing* the online survey remotely. I leave it to you whether the internet renders obvious performing previously local work remotely was a reasonable examination position. I don’t see anything wrong with the examination of this case at all.

      1. 1.2.1

        Yay perfect quality examination.

        1. 1.2.1.1

          See *this* is something that annoys me. Because Paul (and you apparently) don’t want examination – few applicants do – you want an allowance as quickly as possible.

          This pretty much WAS perfect quality examination. You can take issue with the 2.5yr backlog, I would, but when the examiner started they made rejections that were sufficiently convincing that the applicant didn’t appeal for three rounds of examination. When he did appeal it was of dubious logic that it was found non-obvious (no doubt because the board felt that enough was enough as Paul did), and when the law changed the office maintained quality by pulling a bad allowance from issue and issuing a rejection that has been twice upheld, once by the CAFC. The examination was timely, effective, and all the positions were either correct or reasonably put forth. This is what quality examination looks like. It isn’t the examiners fault it took 15 years, as the examiner lacks the ability to force a resolution.

          As I say, applicants don’t actually want examination.

          1. 1.2.1.1.1

            Given the C+C standard of the presumption of validity, it is rational for an Applicant to positively abhor quality pre-issue examination on the “merits”.

            Having said that, a rational Applicant should crave a PTO search of absolutely the highest quality.

            1. 1.2.1.1.1.1

              it is rational for an Applicant to positively abhor quality pre-issue examination on the “merits”.

              MaxDrei being inane.

              The woodshed is calling.

              1. 1.2.1.1.1.1.1

                anon,
                You can just forget about the charge of IE not being met. You weren’t even my atty. but you claimed you owned my IP because Wenzel fell on the sword. GFY buddy you and doll can eat Melda.
                And by the way Dennis it doesn’t matter whether you post this or not. I will say it in court and you can read it on PACER.

                1. but you claimed you owned my IP

                  You are very confused.

                  I am NOT whoever it is that you think did whatever it was that was done to you.

          2. 1.2.1.1.2

            “This pretty much WAS perfect quality examination.”

            From the 30,000ft view it’s easy to mistake good examination with bad examination + bad prosecution. I hope you dug into this case plenty before calling it “perfect.” The very fact that the examiner failed to convince the board of the 103 gives me doubts.

            Anyways, there’s no reason to go out on that limb. Paul’s blaming 24 years of prosecution on the Office is absurd based on the most shallow inspection of the file wrapper. Perhaps he’ll be more keen to further explain his position on prosecution delays than he is on enablement. But until then, why bother?

            1. 1.2.1.1.2.1

              I agree with Ben’s comments here. The ‘sniff’ errors abound from Paul, Random and MaxDrei.

              Not altogether a surprise though.

            2. 1.2.1.1.2.2

              I think the fact that Applicant amended to a 15 (!) step method says all you need to know about the quality of examination. And you have the appeal up above so you can read the nonobviousness logic and ask yourself whether the examiner put forth a reasonable rejection. The fact that the examiner was overruled doesn’t make the examination bad, the reasoning – that surveys were made on the computer and distributing surveys via the internet suggests moving the local steps to the internet – is good. It wouldn’t be bad even absent that teaching, once you disclose the internet the local/remote positioning becomes a matter of simple substitution of known equivalents.

              But your point is well-taken. I will amend to – citing a long prosecution time isn’t much evidence that the examination was deficient given that the timetable is largely controlled by the applicant. The length of the claim, the reasoning of the board, and the upholding of the 101 all suggest that the claims were examined competently and with quality, and a quick view of the paper filings confirms the examiner quickly responded to all filings.

              1. 1.2.1.1.2.2.1

                I think the fact that Applicant amended to a 15 (!) step method says all you need to know about the quality of examination.

                As an asinine examiner, it is not surprising to see you posit such tripe as “See, I caused an amendment, so my rejection ‘must‘ have been good.”

                You need to be placed as far as possible from any interaction with patents.

              2. 1.2.1.1.2.2.2

                The fact that the examiner was overruled doesn’t make the examination bad, the reasoning… is good.

                What exactly do you think being overruled means? Not learn anything and try again, with hope of better luck next time?

                Why are you still an examiner?

          3. 1.2.1.1.3

            See *this* is something that annoys me. Because Paul (and you apparently) don’t want examination…

            Talk about annoying — that would be you drawing a false conclusion and absolutely counter to my known position.

            Way to go, Random. Keep on doubling down with your inanity.

          4. 1.2.1.1.4

            Already answered at 1.1.1. A quarter century of delay would not have occurred here if the PTO took up old cases in true filing date order and did not dishonestly miss-represent continuations and divisionals as “new” or “original’ cases. Furthermore, taking a position that the PTO is legally helpless and impotent to do anything to prevent endless applicant delays is not something the PTO would dare tell Congress or the public.

      2. 1.2.2

        I would posit that using 101 as a hammer to invalidate claims of this type is making it harder to develop 103 jurisprudence along the lines of what you suggest. KSR offers the much better path to dealing with computer implemented methods that are believed to lack an “inventive concept”.

        (Note that I am taking no position on whether this particular claim is inventive.)

        1. 1.2.2.1

          “I would posit that using 101 as a hammer to invalidate claims of this type is making it harder to develop 103 jurisprudence along the lines of what you suggest.”

          I don’t think you’re wrong, because Alice does make it marginally less likely that the CAFC would develop a more permissive understanding of 103. But, based on their history, that outcome is so laughably unlikely that the point seems worth very little.

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