As we’ve covered in other summaries, the Federal Circuit continues to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no inventive concept applied to it and eligible claims directed to more than simply an abstract idea. The Federal Circuit’s recent decision in In re: Downing illustrates that broad, vague claims directed to an aspirational idea to be implemented on a computer will continue to be rejected. The decision further illustrates that such claims are also vulnerable to rejections under § 112. Applicants seeking computer-based claims should be mindful that claims addressing a technological problem in a specific, well-defined way remains the best path to avoid these pitfalls.
In Downing, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that rejected all pending claims of the application as directed to ineligible subject matter, lacking adequate written description, and indefinite.
The Claims at Issue
The application at issue, No. 12/454,528 related to an allegedly new and improved planning model using electronic spreadsheets. Claim 1 was the only pending independent claim:
- A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by processes of:
(a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves the end user’s ease of operation and assessments;
(b) structuring presentations on the same computer platform by linking display of the forecasted data with features of: (1) additional resource planning applications beyond the typical such as an information resource utility and intangibles, (2) adjacent display of the operations and development and strategic plans’ 1-5-15 year forecasts, and (3) comprehensive print views available simultaneously of forecasted activity reports, resource plans, and yearly performance next 15 years such that this process taken in combination expands the utility of resource planning in the field of forecasting; and
(c) constructing one-time settings for the structure, on the same computer platform, for the capability of accommodating the full extent of resource planning cited and more efficient operation by: (1) fixed display of self-explanatory instructions and definitions, (2) only 4 required settings of initializing diffusion indices, starting calendar date, nonfinancial or financial mode, and the names for activity reports, resource plans, and optional information reports, and (3) optional settings related to goals-objective-missions, allocations, and risk-impact data such that this process taken in combination improves the end users’ ease of use and availability of forecasted resource planning applications;
such that this product’s capabilities and features accommodate the full extent of resource types and resource planning (encompassing the five categories of planning noted) for operation by nontechnical or technical users in one unbundled computer file through end user interaction with displays.
The PTO’s Decision
The examiner rejected all pending claims on three grounds: 1) they were directed to patent-ineligible subject matter, 2) they lacked adequate written description support, and 3) they were indefinite. Specifically, the examiner concluded the claims were directed to the abstract idea of creating an electronic spreadsheet for personal management and did not contain significantly more than that idea as any additional limitations were generic computer elements. The examiner further concluded that the term “intangibles” in the asserted claims lacked adequate written description. The term was not included in the original specification, and the examiner rejected amendments to the specification to describe the term as introducing new matter. Finally, the examiner concluded the claims were indefinite for two reasons: 1) it was unclear what class of invention the claims were directed to and 2) the term “end user” lacked antecedent basis. On appeal, the Board affirmed the examiner’s rejections on all three grounds. Downing then appealed to the Federal Circuit.
The Federal Circuit’s Decision
Beginning with the eligibility rejection, the Federal Circuit applied its standard two-step test from Alice Corp.: 1) whether the claims are directed to a patent-ineligible concept and, if so, 2) whether an element or combination of elements in the claim provides an “inventive concept” that amounts to more than a patent on the ineligible concept itself. At the first step, the Federal Circuit agreed that the claims were directed to the ineligible concepts of personal management, resource planning, or forecasting. The court likened the claims to others related to collecting, analyzing, and displaying information that it previously rejected as directed to abstract ideas and was not persuaded Downing’s reliance on cases such as McRO, Inc. v. Bandai Namco Games Am., Inc., 873 F.3d 1299 (Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the court approved the eligibility of claims directed to improvements in computer technology. At step two, the court found no inventive concept as the claims recited only generic computer elements such as a “computer platform” using Excel or a “display.”
Turning to the written description rejection, the Federal Circuit agreed that “intangibles” lacked sufficient written description. The court noted that written description must be judged as of the filing date. As a result, written description must be found in the originally filed specification, and any amendments to add new matter to the specification during prosecution are prohibited. Echoing the examiner’s statement, the court found that “intangibles” was not disclosed or mentioned in the original specification. The court also agreed with the examiner’s objection to Downing’s attempt to amend the specification to define “intangibles” during prosecution. Lastly, the court approved the Board’s finding that a person of ordinary skill in the art would not have understood “intangibles” to refer to several specific items Downing pointed to in the specification.
Finally, the Federal Circuit agreed that the claims were indefinite. The court explained that while the claims purported to be product-by-process claims—“wherein the product is produced by processes of”—the remaining limitations did not define the process for making the product. Instead, those claim limitations—“designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework,” “structuring presentations on the same computer platform,” and “constructing one-time settings for the structure, on the same computer platform”—described functions or features of the product. Because the claims did note recite the steps for making the claimed product, they were indefinite.
The court disagreed with the Board’s conclusion that the claims were also indefinite because “end user” lacked antecedent basis. The court noted that the claims referenced one “end user,” which could only refer to the end user of the product. Thus, lack of an antecedent basis for that term did not render it indefinite.
The claims at issue were exactly the type an applicant for a computer-implemented invention should seek to avoid—vague, difficult-to-follow claims directed to an aspirational idea to be implemented on a computer. The takeaway continues to be that an applicant seeking to avoid Alice eligibility problems should focus on defining a technological problem and claiming a specific implementation that solves that problem and improves computer functionality.