You are here: Ed9 07.2015 Guidebook » Subject Matter Eligibility Updates
IV. Requirements Of A Prima Facie Case
Concern was expressed about examiners satisfying the proper burden for a prima facie case when making an eligibility rejection.
- Accordingly, the following discussion clarifies the requirements of a prima facie case, in order to guide examiners in satisfying their burden and ensuring that they reject on eligibility grounds only where appropriate.
- Examiner training (see Section V) also emphasized that performing a thorough analysis and writing a clear rejection is a critical part of satisfying the examiner’s burden.
- This discussion is meant to help examiners and applicants understand when a proper prima facie case has been made, so there is no doubt as to whether examiners have met their burden.
The concept of the prima facie case is a procedural tool of patent examination, which allocates the burdens going forward between the examiner and applicant.
- In particular, the initial burden is on the examiner to explain why a claim or claims are unpatentable clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.
- For subject matter eligibility, the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception.
- This rationale may rely, where appropriate, on the knowledge generally available to those in the art, on the case law precedent, on applicant’s own disclosure, or on evidence.
- Sample rejections satisfying this burden are found in the training materials, particularly the worksheets for Examples 5‐8.
- Once the examiner has satisfied her initial burden, the burden then shifts to the applicant.
The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. For example:
- Alice Corp., Myriad, Mayo, Bilski, Diehr, Flook and Benson relied solely on comparisons to concepts found to be exceptions in past decisions when identifying judicial exceptions.
- In Bilski, when affirming the Office’s eligibility rejection (which was not supported by evidence), the Supreme Court cited several documents describing “hedging” (a high level description of the detailed concept in the claim).
- The documents were modern day textbooks (that were not prior art) cited as examples that “hedging” is “a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
- These documents cannot be evidence, however, because the Supreme Court is an appellate court limited to review of the record created below, i.e., by the Office’s rejection.
- In Bilski, when affirming the Office’s eligibility rejection (which was not supported by evidence), the Supreme Court cited several documents describing “hedging” (a high level description of the detailed concept in the claim).
- Alice Corp. followed a similar approach to Bilski, when affirming the Federal Circuit’s en banc judgment that the claims were ineligible (which was not supported by evidence).
- In Alice Corp., the documents were textbooks and an article (only one of which qualified as prior art) cited as examples that using a third‐party intermediary is a building block of the modern economy.
- In Alice Corp., the documents were textbooks and an article (only one of which qualified as prior art) cited as examples that using a third‐party intermediary is a building block of the modern economy.
- Alice Corp., Bilski, Diehr, Flook and Benson did not cite any evidence in support of the significantly more inquiry, even where additional elements were identified as well understood, routine and conventional in the art.
- Mayo did not cite any evidence in support of identifying additional elements as mere field‐of‐use or data gathering steps, but did cite the patent’s specification when identifying other limitations as well‐understood, routine and conventional.
- The 2014 IEG follows the analysis used by the Supreme Court and the Federal Circuit by comparing claimed concepts to prior court decisions to identify a law of nature, a natural phenomenon, or an abstract idea for Step 2A.
- For Step 2B, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well‐understood, routine and conventional.
- For example, the courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner:
- performing repetitive calculations,
- receiving, processing, and storing data,
- electronically scanning or extracting data from a physical document,
- electronic recordkeeping,
- automating mental tasks, and
- receiving or transmitting data over a network, e.g., using the Internet to gather data.
- performing repetitive calculations,
This listing is not meant to imply that all computer functions are well‐understood, routine and conventional, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible.
- Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
- This is illustrated, e.g., by Examples 7 (AI‐7: e‐commerce with transaction performance guaranty), (GUI for meal planning), and (updating alarm limits).
- In contrast, courts have held computer‐implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic.
- This is illustrated in, e.g., Examples 3 (AI‐3: digital image processing), (GUI for relocating obscured textual information), and (rubber manufacturing).
Courts have not identified a situation in which evidence was required to support a finding that the additional elements were well‐understood, routine or conventional, but rather treat the issue as a matter appropriate for judicial notice.
- As such, a rejection should only be made if an examiner relying on his or her expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more (Step 2B: NO).
- If the elements or functions are beyond those recognized in the art or by the courts as being well‐understood, routine or conventional, then the elements or functions will in most cases amount to significantly more (Step 2B: YES).
» V. Application Of The 2014 IEG In The Patent Examining Corps
