On December 15, 2016, the United States Patent and Trademark Office (USPTO) issued a guide on subject-matter eligibility under 35 U.S.C. 101, this time focusing on examples in business methods. The guide follows a series of examples issued as follow-ups to the USPTO’s 2014 Interim Guidance on Subject Matter Eligibility (IEG). The guide includes three examples or fact patterns, each with one or more representative claims. The first fact pattern relates to a system for filtering content retrieved from an Internet computer network by individually controlled access network accounts. The claim in the example was found to be eligible under Section 101 by the Federal Circuit in BASCOM Global Internet v. AT & T Mobility LLC, 119 USPQ2d 1236 (Fed. Cir. 2016). The second fact pattern relates to verification of a bank customer’s identity to permit an ATM transaction. The third fact pattern relates to a system for tracking inventory.
The claims are analyzed for subject matter eligibility in accordance with a broadest reasonable interpretation standard. Following the two-part Mayo test, the claims are first analyzed to see if they are directed towards one of the four statutory categories (process, machine, manufacture or composition of matter) in Section 101 (Step 1). If the claim falls within a statutory category, it is determined whether it falls under a judicial exception (abstract ideas, laws of nature or natural phenomena) (Step 2A). If the claim passes muster as an abstract idea, the Examiner must weigh whether the “claim as a whole amounts to significantly more than the abstract idea” (Step 2B). In other words, do the claim limitations constitute “well-understood, routine, conventional functions” or are they “significantly more” than that? (see page 1 of the guide). The weighing of these factors has similarities to a Section 103 type analysis, because whether something is “routine” or “provides an inventive concept” generally depends on what is out there in the art.
As an illustration of how this weighing process may be carried out, the first two claims representing the third fact pattern are discussed below (see pages 13-16 of the guide). In order to easily view the differences between claims 1 and 2, claim 2 is presented as a marked-up version of claim 1. In classic amendment style, the text of subject matter added to claim 1 is shown by underlining the added text. The text of subject matter deleted in claim 1 is shown by striking through the deleted text or through double brackets around the deleted text.
Claim 2: A system for managing an inventory record by tracking the location of items of inventory in a warehouse:
a high-resolution video camera array, each video camera positioned at pre-determined locations with overlapping views,
for acquiring at least one high-resolution image sequence of each item of inventory; comprising
a memory and processor configured to perform the steps of:
(a) creating an inventory record for an item of inventory comprising the acquired image[[s]] sequence of the item from the video camera array;
(b) adding classification data relating to the acquired image[[s]] sequence to the inventory record;
(c) adding location data relating to each acquired image to the inventory record, the location data providing a position of the item of inventory in the image sequence; and
(d) reconstructing the 3-D coordinates of an item of inventory using the location data from multiple overlapping images and prior knowledge of the location and field of view of the camera(s); and
(e) automatically updating the inventory record with the 3-D coordinates a physical location of each item of inventory in the warehouse to thereby manage the items of inventory.
Claim 1 is deemed to have ineligible subject matter. The guide states that “those of ordinary skill in the field of data processing” would recognize that recording, processing, and archiving digital images, albeit in a fast and simple way, reflects “ordinary usage typically performed by a generic computer” (see page 15 of the guide). Furthermore, the guide continues, “the recitation of conventional processing technology performing well-understood, routine, conventional functions such as recognizing and storing data from specific data fields does not reflect an inventive concept” Id.
On the other hand, claim 2 is deemed to have eligible subject matter. The additional step of “reconstructing the 3-D coordinates of an item of inventory using the location data from multiple overlapping images” obtained via a “high-resolution video camera array” (having video cameras positioned at pre-determined locations with overlapping views) and “prior knowledge of the location and field of view of the camera(s)” carries claim 2 over into the realm of something “significantly more than the abstract idea of using data collection techniques to manage inventory” (see page 16 of the guide).
Takeaways from the seven examples of business method claims presented in this guide:
1. Claim language remains of the utmost importance. The continued emphasis on “inventive concept” illustrates the blending of Section 103 obviousness concepts into the Section 101 analysis. However, the analysis is not at the in-depth level required under Section 103. For example, there is no comparing and contrasting of prior art references under the Section 101 eligibility analysis. Claim drafters should ensure the claim language passes muster under a lower-grade Section 103 type analysis in order to meet eligibility under Section 101.
2. It is wise to include a discussion of the practical benefits of the claim in the specification. Being able to overcome the disadvantages of previous systems constitutes direct support for why the specific limitations of a claim are not “well-understood, routine, conventional activities in the field.”
In conclusion, the USPTO’s guide on business methods provides useful examples for patent practitioners to utilize in constructing claims and drafting responses to Office Actions having rejections under Section 101.