The USPTO issued Interim Guidance on patent subject matter eligibility back in December last year. As well as the interim guidance itself a number of “Nature-based Product” examples were released and a number of “Abstract idea” examples were promised. A couple of weeks ago the USTPO updated their guidance to include the Abstract Idea examples which can be found here. In this post IPcopy takes a quick gander through the new examples to see what light, if any, they shed on the new guidance.

Along with the Abstract Idea examples IPcopy stumbled onto the USPTO’s Examination Guidance and Training Materials page which conveniently pulls together the various subject matter eligibility materials that have been released along with material on other subjects such as the America Invents Act, Means plus function limitations (35 U.S.C. 112) and other materials.

Of note within the training materials page above is a set of Training Slides on the Subject matter eligibility guidance which provides a handy walkthrough of the new procedure for determining whether a claim is for eligible subject matter. The overall procedure is shown in slide 6 and a list of examples of abstract ideas is given on slide 16 (and reproduced at the bottom of this post).

The eligibility assessment procedure is as follows:

• Step 1: Is the claim to a process, machine, manufacture or composition of matter? [If no, then the claim is not eligible subject matter. If yes, proceed to Step 2a]
• Step 2a: Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? [If no, the claim qualifies a eligible subject matter. If yes, proceed to Step 2b]
• Step 2b: Does the claim recite additional elements that amount to significantly more than the judicial exception?

The concept of an “Abstract Idea” within the meaning of Step 2a is the subject of the recently released examples which are broken down into two parts. Part 1 covers four claim and case examples (referred to a fact patterns) which are regarded as patent eligible. Part 2 covers a further four examples that are regarded as patent ineligible.

It is noted all of the examples, with the exception of Part 1, Example 1, relate to actual granted claims that were later considered in court. The 8 examples generally fall out as might be expected though there is one eligible case that you’d expect to run into some issues in Europe (Part 1, Example 2) and one ineligible case that you might think could be eligible if a suitable amendment was made (Part 2, Example 5. Possibly a missed trick from the USPTO who could show how an ineligible claim could be made eligible?).

Part 1

• Example 1 (hypothetical) relates to a computer implemented method and computer readable medium for removing malicious code from an electronic communication. This example is held to be eligible. Nothing much of surprise here.
• Example 2 (relates to US7818399). This example covers an e-commerce system in which a composite web page is created in order to keep a user on a given host web page without being referred to a third party affiliate. This eligible example might raise a few eyebrows in Europe as it seems the invention is tackling a business challenge (namely retaining website visitors). As the guidance explains however this invention tackles a problem that has specifically arisen in the realm of computer networks and so the claim is eligible. A cautionary note is then sounded that says that “not all claims purporting to address Internet-centric challenges are eligible” which makes IPcopy wonder how useful this example actually is!
• Example 3 (US5111310) relates to digital image processing (a computer-implemented method for halftoning a gray scale image). Unsurprisingly this is eligible.
• Example 4 (US6417801) relates to a system for improving GPS location determination using mobile phone tower locations. Again, eligible, no real surprise.

Part 2

• Example 5 (US6128415) also relates to Digital Image Processing which immediately made me wonder why it was in the ineligible section. The claim relates to the distortion that arises between the acquisition of an image at a source device and the outputting of a processed version of that image at a destination device such as a printer. Distortion can occur in the images colour and spatial properties and past solutions have addressed the colour element. The invention that is the subject of the patent addresses both spatial and colour distortion in the creation of a device profile. Despite the technical sounding problem the claim is held to be ineligible as presumably it merely manipulates information using mathematical relationships without limiting the use of the device profile to the problem at hand. IPcopy wonders if the claim would have been regarded as eligible if the use of the device profile to reduce distortions in the image at the destination device was claimed? Could the USPTO have improved this example by showing how the claim could be taken from being ineligible to eligible? Was the reason this wasn’t done because the claim in the examples is based on a real world example?
• Example 6 (US6398646) relates to a system for managing a game of bingo! Not eligible, no surprise.
• Example 7 (US7644019) relates to an e-commerce method of providing a transaction performance guaranty. Like, the previous example, not eligible, no surprise.
• Example 8 (US7346545) relates to the distribution of products over the Internet. This essentially seems to relate to a method of supplying copyright material in exchange for watching an advert. Not eligible, no surprise.

So concludes the brief rundown of the Abstract Idea examples. No real surprises perhaps but maybe a missed opportunity.

Returning finally to the Training Slides mentioned above, the following are examples of abstract ideas:

• Mitigating settlement risk
• Hedging
• Creating a contractual relationship
• Using advertising as an exchange or currency
• Processing information through a clearinghouse
• Comparing new and stored information and using rules to identify options
• Comparing a patient’s gene with the wild-type gene, and identifying any differences that arise
• Using categories to organize, store, and transmit information
• Organizing information through mathematical correlations
• Managing a game of Bingo
• The Arrhenius equation for calculating the cure time of rubber
• A formula for updating alarm limits
• A mathematical formula relating to standing wave phenomena
• A mathematical procedure for converting one form of numerical representation to another

Comments on the Guidance may be submitted to the USPTO until 16 March 2015. See here for more details.

Mark Richardson 18 February 2015