Careful Claim Drafting Can Make the Difference for Software Inventions Under USPTO’s § 101 Analysis

Since providing its Interim Guidelines on Patent Eligibility in December 2014 and additional examples in January 2015, the USPTO has received over sixty public comments. In response to the comments and recent case law developments, the USPTO released new guidelines on July 30, 2015, including an Appendix 1 with seven new examples. The examples provide analysis of claims directed to abstract ideas, particularly in the business method, graphical user interface (GUI), and software areas. Examples in the biotechnology area, the USPTO says, are “in process.”

Example 23 provides a particularly interesting contrast of hypothetical claims, presenting two eligible and two ineligible claims directed to the same GUI invention.

Claim 1 recites a “computer-implemented method” with steps of “displaying” windows in a graphical user interface, “monitoring” the boundaries of the windows to detect an overlap condition, “automatically relocating” text to an unobscured portion, and “automatically returning” relocated textual information when the overlap condition resolves. The USPTO explains that this claim is not directed to an abstract idea and therefore is patent-eligible, under a streamlined analysis, because it does not recite any mathematical concept or “mental process such as comparing or categorizing information that can be performed in the human mind.” In addition, the claimed subject matter is characterized as “necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.”

Claims 2 and 3 differ only by the explicit recitation in claim 3 that the calculating step is performed “by the computer.” Both recite a “computer-implemented method” with steps for generating data and “calculating a scaling factor.” In contrast to claim 1, the USPTO finds these claims abstract because they recite a mathematical algorithm. Note that the USPTO characterizes the preamble of claim 2 as “non-limiting” and as stating only “field of use.” On the other hand, the addition of “by the computer” in claim 3 breathes life into the preamble and requires it to be construed to limit the claim.  In the end, however, the USPTO concludes that neither claim comprises “significantly more” than the abstract idea, and therefore both are ineligible. According to the USPTO, even though the invention may “improve computer technology, the claimed invention provides no meaningful limitations such that the improvement is realized.”

Claim 4 is a combination of the first three claims. Although claim 4 is narrower than eligible claim 1, the addition of the calculating and scaling steps forces analysis under the “significantly more” paradigm, rather than the “streamlined analysis.”  When all claim elements are viewed together, however, claim 4 is found to be patent eligible, as reciting a “specific application of the mathematical algorithm that improves the function of the basic display function of the computer itself.”

From Example 23, one may conclude that claims explicitly reciting calculating steps may attract additional rigorous scrutiny. Claims reciting such steps should include other details adding “significantly more.”

More information on the USPTO’s July Update is available here.