The USPTO Subject Matter Eligibility Decisions – An Update
The memorandum issued on 2nd November 2016 clearly states that the recent subject matter eligibility decisions which have been issued by the U.S. Court of Appeals for the Federal Circuit since the May 2016 Update to the USPTO’s subject matter eligibility (SME) guidance, do not change the basic subject matter eligibility framework explained in the SME guidance. Instead, the recent decisions provide additional information about finding eligibility for software claims.
The memorandum discusses two of the recent precedential decisions, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
In McRO, the Federal Circuit held that the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules were patent eligible, because they were not directed to an abstract idea. The basis for the Court’s decision was that the claims were directed to an improvement in computer-related technology. The Court examined the specification, which described the claimed invention as improving computer animation through the use of specific rules, rather than human artists, to set morph weights (relating to facial expressions as an animated character speaks) and transition parameters between phonemes (relating to sounds made when speaking). It was explained in the specification, that human artists did not use the claimed rules, and instead relied on subjective determinations to set the morph weights and manipulate the animated face to match pronounced phonemes. The Court relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated when determining that the claims were directed to improvements in computer animation instead of an abstract idea. In addition, the Court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process”.
The Court noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome, and thus were not directed to an abstract idea.
In BASCOM, the Federal Circuit vacated a judgment of ineligibility because the district court failed to properly perform the second step of the Mayo/Alice framework (Step 2B of the USPTO’s SME guidance) when analyzing a claimed system for filtering content retrieved from an Internet computer network. The Court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that the district court erred by failing to recognize that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements, in this case, the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.
The memorandum also reminded Examiners that given the large and ever-increasing number of precedential decisions, Examiners should avoid relying upon or citing non-precedential decisions unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decision.
This memorandum’s discussion of these two decisions appears to emphasise the need to include not only a detailed description of the invention but also the advantages of the invention. In particular, it would seem that from now on, it will be good practice to include advantages emphasising why the invention is more than just a computer implementation of a human practice, an indication as to why the combination of computer implemented features provides a technical effect, such as, by allowing a computer to perform a function not previously performable by a computer, and/or a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention. It is almost as if the US is moving towards a more European style Problem Solution approach – however, only time, and further precedential decisions, will tell.
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