2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field
|
While improvements were evaluated in Alice Corp. as relevant to the search for an inventive concept (Step 2B), several decisions of the Federal Circuit have also evaluated this consideration when determining whether a claim was directed to an abstract idea (Step 2A).
- Thus, an examiner should evaluate whether a claim contains an improvement to the functioning of a computer or to any other technology or technical field at Step 2A Prong Two and Step 2B, as well as when considering whether the claim has such self-evident eligibility that it qualifies for the streamlined analysis.
- See MPEP § 2106.04(d)(1) for more information about evaluating improvements in Step 2A Prong Two, and MPEP § 2106.07(b) for more information about improvements in the streamlined analysis context.
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.
- That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
- The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.
- Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.
An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.
- For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea.
- In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible.
After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp.
- That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.
- However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").
The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification).
- In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps."
- When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims.
An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
- In this respect, the improvement consideration overlaps with other considerations, specifically the particular machine consideration, and the mere instructions to apply an exception consideration.
- Thus, evaluation of those other considerations may assist examiners in making a determination of whether a claim satisfies the improvement consideration.
It is important to note, the judicial exception alone cannot provide the improvement.
- The improvement can be provided by one or more additional elements.
- In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception.
Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.
During examination, the examiner should analyze the "improvements" consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement.
- Generally, examiners are not expected to make a qualitative judgement on the merits of the asserted improvement.
- If the examiner concludes the disclosed invention does not improve technology, the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
- Any such evidence submitted under 37 CFR 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification.
For example, in response to a rejection under 35 U.S.C. 101, an applicant could submit a declaration under § 1.132 providing testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion.
I. IMPROVEMENTS TO COMPUTER FUNCTIONALITY
In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool.
In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality.
It was the specification’s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility.
The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts.
Examples that the courts have indicated may show an improvement in computer-functionality:
- i. A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage;
- ii. Inventive distribution of functionality within a network to filter Internet content, BASCOM Global Internet v. AT&T Mobility LLC;
- iii. A method of rendering a halftone digital image, Research Corp. Techs. v. Microsoft Corp;
- iv. A distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records, Amdocs (Israel), Ltd. v. Openet Telecom, Inc;
- v. A memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance, Visual Memory, LLC v. NVIDIA Corp;
- vi. Technical details as to how to transmit images over a cellular network or append classification information to digital image data, TLI Communications LLC v. AV Auto. LLC;
- vii. Particular structure of a server that stores organized digital images, TLI Communications;
- viii. A particular way of programming or designing software to create menus, Apple, Inc. v. Ameranth, Inc;
- ix. A method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning. Finjan Inc. v. Blue Coat Systems;
- x. An improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc;
- xi. Specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; Data Engine Techs., LLC v. Google LLC; and
- xii. A specific method of restricting software operation within a license, Ancora Tech., Inc. v. HTC America, Inc.
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.
- Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology.
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality:
- i. Generating restaurant menus with functionally claimed features, Ameranth;
- ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys;
- iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc;
- iv. Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications;
- v. Affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed, Secured Mail Solutions, LLC v. Universal Wilde, Inc;
- vi. Instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result, Interval Licensing LLC v. AOL, Inc.;
- vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc; and
- viii. Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC.
II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD
The courts have also found that improvements in technology beyond computer functionality may demonstrate patent eligibility.
In McRO, the Federal Circuit held claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules to be patent eligible under 35 U.S.C. 101, because they were not directed to an abstract idea.
The basis for the McRO court's decision was that the claims were directed to an improvement in computer animation and thus did not recite a concept similar to previously identified abstract ideas.
- The court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated.
The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.
- The McRO court also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome, and thus were not directed to an abstract idea.
Consideration of improvements is relevant to the eligibility analysis regardless of the technology of the claimed invention.
- That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology.
See, e.g., Rapid Litigation Management v. CellzDirect, Inc., in which the court noted that a claimed process for preserving hepatocytes could be eligible as an improvement to technology because the claim achieved a new and improved way for preserving hepatocyte cells for later use, even though the claim is based on the discovery of something natural.
- Notably, the court did not distinguish between the types of technology when determining the invention improved technology.
- However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology.
For example, in Trading Technologies Int’l v. IBG, the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.
Examples that the courts have indicated may be sufficient to show an improvement in existing technology include:
- i. Particular computerized method of operating a rubber molding press, e.g., a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art, Diamond v. Diehr;
- ii. New telephone, server, or combination thereof, TLI Communications LLC v. AV Auto. LLC;
- iii. An advance in the process of downloading content for streaming, Affinity Labs of Tex. v. DirecTV, LLC;
- iv. Improved, particular method of digital data compression, DDR Holdings, LLC. v. Hotels.com, L.P; Intellectual Ventures I v. Symantec Corp;
- v. Particular method of incorporating virus screening into the Internet, Symantec Corp;
- vi. Components or methods, such as measurement devices or techniques, that generate new data, Electric Power Group, LLC v. Alstom, S.A.;
- vii. Particular configuration of inertial sensors and a particular method of using the raw data from the sensors, Thales Visionix, Inc. v. United States;
- viii. A specific, structured graphical user interface that improves the accuracy of trader transactions by displaying bid and asked prices in a particular manner that prevents order entry at a changed price, Trading Techs. Int’l, Inc. v. CQG, Inc; and
- ix. Improved process for preserving hepatocytes for later use, Rapid Litig. Mgmt. v. CellzDirect, Inc.
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
- i. A commonplace business method being applied on a general purpose computer, Alice Corp; Versata Dev. Group, Inc. v. SAP Am., Inc;
- ii. Using well-known standard laboratory techniques to detect enzyme levels in a bodily sample such as blood or plasma, Cleveland Clinic Foundation v. True Health Diagnostics, LLC;
- iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications;
- iv. Delivering broadcast content to a portable electronic device such as a cellular telephone, when claimed at a high level of generality, Affinity Labs of Tex. v. Amazon.com; Affinity Labs of Tex. v. DirecTV, LLC;
- v. A general method of screening emails on a generic computer, Symantec;
- vi. An advance in the informational content of a download for streaming, Affinity Labs of Tex. v. DirecTV, LLC; and
- vii. Selecting one type of content (e.g., FM radio content) from within a range of existing broadcast content types, or selecting a particular generic function for computer hardware to perform (e.g., buffering content) from within a range of well-known, routine, conventional functions performed by the hardware, Affinity Labs of Tex. v. DirecTV, LLC.
