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IP Alert UPDATE: USPTO Releases Supplemental Guidance on Subject Matter Eligibility

February 4, 2015

UPDATE: As we reported in a previous IP alert, the U.S. Patent and Trademark Office (USPTO) has been working to provide guidance to examiners on the issue of subject matter eligibility. On January 27, 2015, the USPTO issued supplemental interim guidance in the form of specific examples of what it deems to be eligible and ineligible subject matter. These examples follow:

Eligible Subject Matter

Example 1 (presented by the USPTO as a hypothetical case)

The invention relates to isolating and removing malicious code from electronic messages such as email to prevent a computer from being infected with a computer virus. A method claim for this concept reads as follows:

A computer-implemented method for protecting a computer from an electronic communication containing malicious code, comprising executing on a processor the steps of: 

receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a quarantine sector and a non-quarantine sector; 

storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is prevented from performing write actions on other memory sectors; 

extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic communication, wherein the extracting comprises 

scanning the communication for an identified beginning malicious code marker,

flagging each scanned byte between the beginning marker and a successive end malicious code marker, 

continuing scanning until no further beginning malicious code marker is found, and 

creating a new data file by sequentially copying all non-flagged data bytes into a new file that forms a sanitized communication file; 

transferring the sanitized electronic communication to the non-quarantine sector of the memory; and

deleting all data remaining in the quarantine sector.

The USPTO deems this claim to be patent-eligible and not “abstract,” because the “claim is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. Such action does not describe an abstract concept, or a concept similar to those found by the courts to be abstract, such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship. In contrast, the invention claimed here is directed towards performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract. Accordingly, the claimed steps do not recite an abstract idea.”

Example 2 (presented by the USPTO as reflecting a recent decision of the Court of Appeals for the Federal Circuit)

The invention relates to retaining control over customers during web-based affiliate purchase transactions by creating a system for co-marketing the “look and feel” of the host web page with the product-related content information of the advertising merchant’s web page. The system can be operated by a third-party outsource provider who acts as a broker between multiple hosts and merchants. An apparatus claim for this concept reads as follows:

A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages; 

(i) wherein each of the first web pages belongs to one of a plurality of web page owners;

(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and

(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other; 

(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:

(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;

(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;

(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and

(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.

This claim is deemed not to be “abstract” because “the claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice. The claim addresses a business challenge (retaining website visitors) that is particular to the Internet. The claimed invention differs from other claims found by the courts to recite abstract ideas in that it does not ‘merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’ No idea similar to those previously found by the courts to be abstract has been identified in the claim.”

Example 3 (presented by the USPTO as being hypothetical but nevertheless “informed” by a corresponding decision of the Federal Circuit)

The invention relates to “halftoning” techniques used to develop digital images that include developing an improved mask called a “blue noise” mask. A method claim for this concept reads as follows:

A computer-implemented method for halftoning a gray scale image, comprising the steps of:

generating, with a processor, a blue noise mask by encoding changes in pixel values across a plurality of blue noise filtered dot profiles at varying gray levels;

storing the blue noise mask in a first memory location;

receiving a gray scale image and storing the gray scale image in a second memory location;

comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image to a threshold number in the corresponding position of the blue noise mask to produce a binary image array; and

converting the binary image array to a halftoned image.

In this case, the USPTO deems the claim to be “abstract” because “the claim recites the step of generating a blue noise mask, which as defined in the background is produced through an iterative mathematical operation. The courts have found that mathematical relationships fall within the judicial exceptions, often labelled as ‘abstract ideas.’”

That said, the USPTO nonetheless deems this claim to be patent-eligible, because the claim amounts to “significantly more” than the aforementioned mathematical operation. Specifically, the claim “recites the additional steps of comparing the blue noise mask to a gray scale image to transform the gray scale image to a binary image array and converting the binary image array into a halftoned image.” According to the USPTO, these “additional steps tie the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. These steps add meaningful limitations to the abstract idea of generating the blue noise mask and therefore add significantly more to the abstract idea than mere computer implementation. The claim, when taken as a whole, does not simply describe the generation of a blue noise mask via a mathematical operation and receiving and storing data, but combines the steps of generating a blue noise mask with the steps for comparing the image to the blue noise mask and converting the resulting binary image array to a halftoned image. By this, the claim goes beyond the mere concept of simply retrieving and combining data using a computer.”

Example 4 (presented by the USPTO as being hypothetical but nevertheless “informed” by a corresponding decision of the Federal Circuit)

The invention relates to a server that is wirelessly coupled to a mobile GPS receiver and that uses a mathematical model to solve for the mobile receiver position without receiving satellite positioning data or absolute time information from a satellite. An apparatus claim for this concept reads as follows:

A system for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals comprising:

a mobile device comprising a GPS receiver, a display, a microprocessor and a wireless communication transceiver coupled to the GPS receiver, the mobile device programmed to receive PN codes sent by a plurality of GPS satellites, calculate pseudo-ranges to the plurality of GPS satellites by averaging the received PN codes, and transmit the pseudo-ranges, and

a server comprising a central processing unit, a memory, a clock, and a server communication transceiver that receives pseudo-ranges from the wireless communication transceiver of the mobile device, the memory having location data stored therein for a plurality of wireless towers, and the central processing unit programmed to:

estimate a position of the GPS receiver based on location data for a wireless tower from the memory and time data from the clock,

calculate absolute time that the signals were sent from the GPS satellites using the pseudo-ranges from the mobile device and the position estimate,

create a mathematical model to calculate absolute position of the GPS receiver based on the pseudo-ranges and calculated absolute time,

calculate the absolute position of the GPS receiver using the mathematical model, and

transmit the absolute position of the GPS receiver to the mobile device, via the server communication transceiver, for visual representation on the display.

The USPTO deems this claim to be “abstract” because the claim recites mathematical operations (e.g., calculating pseudo-ranges and absolute times, and the mathematical model) that the courts have found to be abstract ideas. 

That said, the USPTO still finds the claim to present eligible subject matter, again because the claim amounts to “significantly” more than the aforementioned mathematical operation. The claim “is further limited to a mobile device comprising a GPS receiver, microprocessor, wireless communication transceiver and a display that receives satellite data, calculates pseudo-ranges, wirelessly transmits the calculated pseudo-ranges to the server, receives location data from the server, and displays a visual representation of the received calculated absolute position from the server. The programmed CPU acts in concert with the recited features of the mobile device to enable the mobile device to determine and display its absolute position through interaction with a remote server and multiple remote satellites. The meaningful limitations placed upon the application of the claimed mathematical operations show that the claim is not directed to performing mathematical operations on a computer alone. Rather, the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. All of these features, especially when viewed in combination, amount to significantly more than the judicial exception.”

As noted in the aforementioned interim guidance, “the Supreme Court did not create a per se excluded category of subject matter, such as software or business methods, nor did it impose any special requirements for eligibility of software or business methods.” And as noted by the Supreme Court itself in the recent Alice decision, one must “tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” In fact, with the foregoing examples, the USPTO seems to be advancing carefully when it comes to treating a concept as being “abstract.” Generally speaking, the further a given concept may be from something that has already been specifically categorized as “abstract,” the less likely it appears that the USPTO wishes to be the first to place that label on the concept.

Ineligible Subject Matter

All of the claims presented here as examples of ineligible subject matter were previously held ineligible by the Federal Circuit. The analysis offered here, however, is hypothetical in that USPTO similarly finds ineligibility within the framework of the 2014 Interim Guidance.

Example 5 

The invention relates to capturing both spatial and color properties of an image-capture device such as a digital camera and of a corresponding destination device such as a printer. The information in those profiles enables a more accurate translation of the images’ pixel data into an independent color space. A method claim for this concept reads as follows:

A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;

generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and

combining said first and second data into the device profile.

This claim is deemed “abstract” because the claim “recites a method of generating first data and second data using mathematical techniques and combining the first and second data into a device profile. . . . The gathering and combining merely employs mathematical relationships to manipulate existing information to generate additional information in the form of a ‘device profile,’ without limit to any use of the device profile. This idea is similar to the basic concept of manipulating information using mathematical relationships . . . which has been found by the courts to be an abstract idea.”

Furthermore, because this claim is deemed to “not include additional elements beyond the abstract idea of gathering and combining data,” the claim is presented as amounting to no more than the abstract idea itself and is hence ineligible subject matter.

Example 6

The invention relates to an automated bingo system. The automated system allows for managing all aspects of the bingo game including addressing tampering problems and minimizing other security risks. An apparatus claim for this concept reads as follows:

A system for managing a game of Bingo which comprises:

(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;

(b) an input and output terminal connected to the CPU and memory of the computer; and

(c) a program in the computer enabling:

(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;

(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;

(iii)  assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;

(iv) retrieval of the group using the player identifier;

(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;

(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo;

(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a computer identification number; and

(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo.

“Managing the game of Bingo as recited in the claim can be performed mentally or in a computer and is similar to the kind of ‘organizing human activity’ at issue in Alice Corp. Although the claims are not drawn to the same subject matter, the abstract idea of managing a game of Bingo is similar to the abstract ideas of managing risk (hedging) during consumer transactions (Bilski) and mitigating settlement risk in financial transactions (Alice Corp.).” This claim is therefore deemed to be directed to an abstract idea.

Furthermore, the “generic computer components are claimed to perform their basic functions of storing, retrieving and processing data through the program that enables the management of the game of Bingo. The recitation of the computer limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, the computer components at each step of the management process perform purely generic computer functions.” Accordingly, the claim is also deemed to present ineligible subject matter.

Example 7

The invention relates to conducting reliable transactions in an e-commerce environment. In particular, this invention relates to methods providing a performance guarantee in a transaction. A method claim for this concept reads as follows:

A method, comprising:

receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction;

processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party,

wherein the computer of the safe transaction service provider offers, via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.

“The claim recites the steps of creating a contract, including receiving a request for a performance guaranty (contract), processing the request by underwriting to provide a performance guaranty and offering the performance guaranty. This describes the creation of a contractual relationship, which is a commercial arrangement involving contractual relations similar to the fundamental economic practices found by the courts to be abstract ideas (e.g., hedging in Bilski).”

The USPTO goes on to say, “[The] claim limitations in addition to the abstract idea include a computer application running on a computer and the computer network. This is simply a generic recitation of a computer and a computer network performing their basic functions. The claim amounts to no more than stating create a contract on a computer and send it over a network. These generic computing elements alone do not amount to significantly more than” the abstract idea itself. Accordingly, the USPTO concludes that this claim does not present eligible subject matter.

Example 8

In this final example, the invention relates to allowing a consumer to choose to view or interact with a sponsor’s message in exchange for accessing copyrighted material. A method claim for this concept reads as follows:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

The USPTO explains, “The claim recites an eleven step process for displaying an advertisement in exchange for access to copyrighted media. That is, the claim describes the concept of using advertising as an exchange or currency. This concept is similar to the concepts involving human activity relating to commercial practices (e.g., hedging in Bilski) that have been found by the courts to be abstract ideas. The addition of limitations that narrow the idea, such as receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad, further describe the abstract idea, but do not make it less abstract.”

As for the remaining limitations, “the accessing and updating of an activity log are used only for data gathering and, as such, only represent insignificant pre-solution activity. Similarly, requiring a consumer request and restricting public access is insignificant pre-solution activity because such activity is necessary and routine in implementing the concept of using advertising as an exchange or currency; i.e., currency must be tendered upon request in order for access to be provided to a desired good. Furthermore, the Internet limitations do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment.” Accordingly, the remainder of the claim is not viewed as adding significantly more to the abstract idea of using advertising as an exchange or currency and hence the claim is not patent eligible.

For each of the examples presented above that demonstrate ineligible subject matter, the USPTO stuck with real-life examples where a high-ranking court, in fact, concluded that the claims were ineligible. This approach accords with the cautious approach noted above and perhaps underscores that the USPTO intends to follow, rather than lead, when it comes to expanding the scope of what is considered “abstract” for the purpose of applying their interim guidelines.

The USPTO’s notice update includes a number of other claim examples and further analysis. If you have questions regarding this new guidance, please contact Steven G. Parmelee, author of this alert.

 

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