As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). This Interim Guidance was published as a notice for comments with the possibility of being revised, depending on public feedback.
On March 16, 2015, two of the largest and most influential IP bar organizations, the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA), submitted comment letters. A key argument (among others) made by both organizations was the importance of requiring examiners to present a well-reasoned prima facie case of ineligibility, i.e., one supported by factual evidence. I believe this is an excellent suggestion. If adopted, it could go a long way toward easing applicants’ burdens in dealing with the recent onslaught of rejections under §101.
It is now very common for practitioners working with software-related inventions to face rejections that consist of boilerplate language lacking specific evidence or analysis. Such rejections are extremely difficult to respond to and drive up the cost of prosecution. In my view, a view that appears to be shared by AIPLA and IPO, examiners should be instructed that conclusory assertions of ineligibility are insufficient, and that §101 rejections require careful analysis supported by factual evidence.
The following paragraphs summarize the main points made by AIPLA and IPO as related to rejections under the abstract idea exception. Both organizations address other exceptions, including natural laws and products of nature. The interested reader should consult the full letters for further details.
AIPLA generally said that the Interim Guidance does not adequately conform to Supreme Court and Federal Circuit case law, stressing that it falls short by describing a process that could encourage examiners to dissect claims, by not imposing a prima facie burden on examiner ineligibility determinations and by not requiring substantial evidence in support of those determinations.
According to AIPLA, it is essential that examiners be required to support a determination of abstract idea ineligibility and lack of inventive concept with factual support. The examiner should be required to produce substantial evidence in the form of a reference showing that the identified idea is fundamental or that the limitations included are well-understood, routine, or conventional in the art.
Importantly, per AIPLA, examiners must be instructed to “tread carefully” in finding claims ineligible for patent protection. AIPLA pointed to Justice Breyer’s admonishment in Mayo, pointing out that at some level “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” and that “too broad an interpretation of this exclusionary principle could eviscerate patent law.” If there is doubt, examiners should be instructed to resolve that doubt in favor of eligibility, not ineligibility. [Amen!]
IPO said that clear and accurate guidance on subject matter eligibility is critical to protect R&D investments, particularly in such technology-driven areas as the computing/software and medicine/biotechnology fields. Any weakening, or uncertainty, of protection could discourage investment in these fields, potentially harming the U.S. economy. Similar to AIPLA, IPO urged the USPTO to clarify the evidentiary burden for examiners in subject matter rejections, and to provide additional technical examples to clarify the eligibility analysis.
The IPO letter pointed out that the USPTO bears the initial burden of presenting a prima facie case supported by substantial evidence. For example, IPO argues that in Step 2A of the §101 analysis examiners should be instructed that they need to provide documentary evidence or a clear and unmistakable technical line of reasoning to support an assertion that a claim recites a law of nature, a natural phenomenon, or an abstract idea. Examiners should be required, for example, to articulate any alleged judicial exception to permit applicant rebuttal with reasoning or evidence. For instance, if an examiner asserts that a claim recites “a fundamental economic practice,” “long-standing commercial practice,” or other allegedly “long-prevalent” concept, the examiner’s should be required to provide documentary evidence of such. The Supreme Court and Federal Circuit reasoning in recent cases underscores the need for documentary evidence, as these courts have cited textbooks and other references when analyzing claims under Step 1 of the §101 analysis. The mere assertion that a claim recites a judicial exception and nothing “significantly more” is inadequate and requires the applicant to prove a negative – that the elements beyond the identified abstract idea are not routine or are unconventional.
Similarly, in Step 2B of the §101 analysis examiners should be instructed that when they determine whether a claim recites additional elements that amount to “significantly more” than the judicial exception – such as whether claimed elements are “well-understood, routine, [and] conventional” to scientists who work in the field of the invention – they should provide documentary evidence or a “clear and unmistakable technical line of reasoning” to support any rejection, and that they must account for all recited features.
Recent Board Decision
The notion that, before rejecting claims under §101, examiners are required to present an evidence-based prima facie case of ineligibility is supported by the recent Patent Trial and Appeal Board (PTAB) decision in Ex Parte Poisson (PTAB February 26, 2015). The claimed invention was a “method for playing a card game that simulated a game of football with kibitz and side-bet options.” The examiner had rejected claims 1-20 under 35 USC §101 as being an attempt to claim a new set of rules for playing a card game, which the examiner opined was an abstract idea and thus not patentable. The Board disagreed, applying the two-step procedure of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), but getting only to the first step.
First, the Board did not agree that claim 1 was directed to “a new set of rules for playing a card game.” In the Board’s view, claim 1 was directed to the playing of a football game, using a table and cards, with kibitzing and betting features – that is, a simulation of a football game using a table and cards. Thus, in the first step of the Alice analysis, the question was whether the method of claim 1, as a simulation of a football game using a table and cards, was directed to an abstract idea. That determination had not been made in this case based on evidence. Instead, the examiner merely expressed an opinion that “a set of rules qualifies as an abstract idea.” Thus a prima facie case of patent-ineligible subject matter had not been established.
The Board made the following statement, which should be helpful to applicants in responding to §101 rejections:
The PTO bears the initial burden of establishing a prima facie case of patent-ineligible subject matter under 35 USC §101. Because the facts and evidence do not support the finding that claim 1 is “an attempt to claim a new set of rules for playing a card game” and therefore, necessarily, is an abstract idea, a prima facie case of patent-ineligible subject matter under 35 U.S.C. §101 has not been established in the first instance by a preponderance of the evidence.
(Ex Parte Poisson, p. 5, emphasis supplied.)
Most useful inventions are patent-eligible, and the abstract idea and other judicial exceptions are just what the name implies, exceptions. If the USPTO effects the changes to the Interim Guidance described above, this could reverse the recent surge of §101 rejections and ease the financial burden such rejections place on applicants.
 In support of its argument, the IPO cites In Re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In Re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001); and Hyatt v. Dudas, 492 F. 3d 1365, 1369 (Fed Cir. 2007). The gist of the argument is that an assessment of basic knowledge and common sense “not based on any evidence in the record” fails to meet the substantial evidence standard. Also, it is important to require the examiner to adequately explain the shortcomings perceived in the claims so that the applicant is properly notified and able to respond.
 For this latter proposition, the letter cited Bilski v. Kappos, 561 U.S. 593 (2010) (citing three textbooks on finance in demonstrating that “hedging is a fundamental economic practice”); Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 34 S. Ct. 2347 (2014) (citing a textbook from 1896 in demonstrating that “the concept of intermediated settlement is ‘a fundamental economic practice long prevalent’”); and BuySafe, Inc. v. Google, Inc., __ F. 3d __, 112 USPQ 2d 1093 (Fed. Cir. 2014) (citing a history textbook from 1927 in demonstrating that “creating a contractual relationship” is “beyond question of ancient lineage.”