On May 19, the USPTO released an update to patent examiners regarding the U.S. Court of Appeals for the Federal Circuit’s (CAFC) recent decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. Both cases were recently discussed in the 213 Blog. In Enfish, the CAFC held that a claimed database software designed as a “self-referential” table is patent eligible under 35 U.S.C. § 101, holding the software was not directed to an abstract idea. In TLI Communications, the court found claims directed to the steps of recording, administration and archiving of digital images to be abstract ideas as claims described generalized steps to be performed on a computer using conventional computer activity.
The USPTO characterized the Enfish and TLI Communications decisions as consistent with the UPTO’s previous guidance documents, stating “While the decision does not change the subject matter eligibility framework, it provides additional information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject matter eligibility examination guidelines).”
The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.
The update highlights four points made by the CAFC in subject matter eligibility analysis in the Enfish decision. First, the update reinforces the principle of comparing the concepts claimed in the claims at issue to concepts that were previously found to be abstract ideas or non-abstract ideas in previous court decisions. The final paragraph of the update reiterates this point stating “In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites … a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.”
Second, the update emphasized the “directed to” inquiry as applying a filter to claims (interpreted in view of the specification) to determine if the character of the claims as a whole is directed to a patent ineligible concept. On this point, the update did not directly discuss the CAFC’s expanded analysis of the invention at Step 2A of the guidelines. However, the CAFC’s logic in finding the claims patent eligible in Enfish was discussed briefly, particularly with regard to examining the specification for the benefits of the claimed improvement over the prior art. The update clearly states that an examiner may determine that a claim directed to improvements in computer-related technology is not an abstract idea under Step 2A without analyzing the additional elements under Step 2B, thereby truncating the analysis.
Third, and importantly, the Federal Circuit cautions against describing a claim at a “high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention” as the CAFC made abundantly clear in the Enfish decision. From a review of the previous subject matter eligibility guidelines, this is the strongest statement to date on this point. Fourth, and finally, the update notes that “an invention’s ability to run on a general purpose computer does not automatically doom the claim.”
The update concludes by comparing the TLI Communications decision with Enfish, noting in particular that the claimed functions, namely recording, administration and archiving of digital images, were found to be abstract ideas in Step 2A. The additional elements recited in the claims (a telephone and a server) did not add significantly more to the abstract idea as they were well- understood, routine, conventional activities.
In summary, it is likely that the examining corps will continue to undertake the Step 2A analysis by comparing the concepts of the claims under examination to concepts previously found to be abstract or non-abstract under previous case law and not undertake any in-depth analysis of the claims at Step 2A, as was done in the Enfish decision. One important point from the new update is the cautionary statement about characterizing the claims at a high level of abstraction. This concept was not stated clearly in the previous guidance documents (July 2012, March 2014, July 2015 or June 2016) and can provide a patent applicant responding to a subject matter eligibility rejection with strong arguments in appropriate circumstances. In this regard, remember the specification in Enfish recited a specific algorithm for the implementation of the claimed self-referential database, and this fact was cited by the CAFC as tailoring the scope of the claims in such a way that the claims did not read as “generalized” steps to be performed on a computer using conventional computer activity. Patent applicants should be mindful to provide a full description of the invention, including appropriate description of how the claimed invention functions and the improvements achievable by the claimed invention over the prior art.