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This is an update to my recent <a href="http://www.ipintelligencereport.com/2016/05/12/major-101-decision-enfish-v-microsoft/">article</a> about the Federal Circuit’s decision in <a href="https://ipintelligencereport.bakerhostetlerblogs.com/wp-content/uploads/sites/11/2016/05/USPTO-Enfish-Memo.pdf">Enfish v. Microsoft</a>.

In a memo to the Patent Examining Corps dated May 19, 2016, Deputy Commissioner Robert Bahr said that the Enfish decision provides “additional information and clarification on the inquiry for identifying abstract ideas.” The gist of the memo is that when performing an analysis of whether a claim is directed to an abstract idea, examiners should continue to determine if the claim recites a concept similar to concepts previously found abstract by the courts. In addition, the fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.

Of importance to applicants and practitioners in the software field, the memo noted that to make the determination of whether the Enfish claims were directed to an improvement in existing computer technology, the court looked to the teachings of the specification; specifically, the court identified the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times and smaller memory requirements. It was noted that the improvement does not need to be defined by reference to “physical” components, but instead could be defined by “logical structures and processes.”

I believe that software patents can be strengthened against Alice attacks by including descriptions of structural (as opposed to functional) features of the inventive software. Such structural features can include “program structures” and “data structures.” Examples of program structures include structures such as program loops, neural network and other architectural aspects. Data structures can include trees, graphs, link lists, arrays, etc. These structures can be effectively used to constrain the claim scope sufficiently to avoid invalidation based on the abstract idea exception.

For further reading on the use of structural claim limitations in software patents, see my article <a href="http://www.bakerlaw.com/articles/michael-stein-examines-use-of-structural-claim-limitations-in-software-patents">here</a>.

USPTO Memo re Enfish v. Microsoft