On January 7, 2019, the U.S. Patent and Trademark Office published updated examination guidance, instructing the examining corps and the PTAB how they should apply 35 U.S.C. § 101. On the same day, the USPTO also published the latest in its series of examples of how this application of the § 101 inquiry should be carried out. This latest set, encompassing Examples 37-42, apply the updated guidance (Examples 1-36 were previously published over the last four years and apply previous versions of the guidance). Our analyses of Examples 37, 38, and 39 were recently posted.
The USPTO emphasizes that these examples are "hypothetical and only intended to be illustrative of the claim analysis" under the updated guidance. Furthermore, the examples "should be interpreted based on the fact patterns set forth below as other fact patterns may have different eligibility outcomes." In other words, even if an applicant's claim recites similar language and functionality as that of one of the examples, that does not mean the applicant's claim is patent-eligible.
The updated guidance modified only part of the § 101 analysis (step 2A in the USPTO's parlance). As set forth in Alice Corp. v. CLS Bank Int'l, this step involves determining whether a claim is directed to a judicial exception, such as an abstract idea. If not, then no § 101 rejection can be made.
The updated guidance breaks step 2A into a pair of sub-steps:
• In sub-step 2A(i), one is to determine whether the claim recites a judicial exception, such as an abstract idea. Abstract ideas are now limited to three categories: mathematical concepts, certain methods of organizing human activity, and mental processes. If there is no exception recited, the claim is eligible.
• If the claim recites such an exception, then in sub-step 2A(ii) one is to determine further "whether the recited judicial exception is integrated into a practical application of that exception." If so, the claim is eligible.
If the claim fails to establish its eligibility in step 2A, the second part of the § 101 analysis (step 2B) is applied to determine whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. If this is the case, the claim is patent-eligible under § 101. If not, it can be rejected.
Background
Example 40 relates to adaptive monitoring of network traffic. The background provided by the USPTO is as follows (abbreviated to focus on key aspects):
In a typical setup, a NetFlow exporter generates and exports network traffic statistics (in the form of NetFlow records) to at least one NetFlow collector that analyzes the statistics. Because NetFlow records are very large, the continual generation and export of NetFlow records in such a setup substantially increases the traffic volume on the network, which hinders network performance. Moreover, continual analysis of the network is not always necessary when the network is performing under normal conditions.
Applicant's invention addresses this issue by varying the amount of network data collected based on monitored events in the network. That is, the system will only collect NetFlow protocol data and export a NetFlow record when abnormal network conditions are detected. In practice, during normal network conditions, a network appliance collects network data [which] could include network delay, packet loss, or jitter. Periodically, the network data is compared to a predefined quality threshold. If this network data is greater than the predefined quality threshold, an abnormal condition is detected. When an abnormal condition is present, the system begins collecting NetFlow protocol data, which can later be used for analyzing the abnormal condition.
Claim 1
Claim 1 of Example 40 recites:
A method for adaptive monitoring of traffic data through a network appliance connected between computing devices in a network, the method comprising:
collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter;
comparing, by the network appliance, at least one of the collected traffic data to a predefined threshold; and
collecting additional traffic data relating to the network traffic when the collected traffic data is greater than the predefined threshold, the additional traffic data comprising Netflow protocol data.
Applying the first sub-step of 2A, the USPTO states that this claim recites a mental process. Particularly, "the limitation of comparing at least one of the collected traffic data to a predefined threshold . . . as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components" and "[t]he mere nominal recitation of a generic network appliance does not take the claim limitation out of the mental processes grouping."
Moving on to the second sub-step of 2A, the USPTO finds that the additional elements integrate this mental process into a practical application thereof. The USPTO writes "[a]lthough each of the collecting steps analyzed individually may be viewed as mere pre- or post-solution activity, the claim as a whole is directed to a particular improvement in collecting traffic data." That is, collection of additional Netflow data occurs only when there is an abnormal condition. This "avoids excess traffic volume on the network and hindrance of network performance" and therefore "provides a specific improvement over prior systems."
Accordingly, claim 1 is not directed to an abstract idea, which renders it patent-eligible under step 2A. No step 2B analysis need take place.
Claim 2
Claim 2 of Example 40 recites:
A method for monitoring of traffic data through a network appliance connected between computing devices in a network, the method comprising:
collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter; and
comparing, by the network appliance, at least one of the collected traffic data to a predefined threshold.
Thus, claim 2 is essentially the same as claim 1, but omits the collecting of additional traffic data.
Applying the first sub-step of 2A, the USPTO states that claim 2 recites a mental process, largely on the same grounds as stated above for claim 1 -- that the comparing step can be performed in one's mind but for the recitation of a generic network appliance.
But when the inquiry moves to the second sub-step of 2A, the USPTO takes the position that this claim fails to integrate the mental process into a practical application. Particularly, the USPTO finds that the collecting step is recited at a high level of generality, and "amounts to mere data gathering, which is a form of insignificant extra-solution activity." The USPTO further indicates that "[t]he combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component (the network appliance)." Thus, the claim fails the second sub-step of 2A.
Applying step 2B, the USPTO rapidly dismisses the additional elements as well-understood, routine, and conventional. The USPTO notes that "a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B." Based on the background of the example, the network appliance is a generic computer component. Therefore, even under Berkheimer v. HP, the additional elements do not provide significantly more than the abstract idea, and the claim is ineligible.
Analysis
Not unlike Example 37, Example 40 stands for the counter-intuitive position that a mental process is not a mental process. A claim that, as recited, cannot be wholly carried out in the mind can still fall under that category. This can potentially lead to interesting application of the USPTO's test, because it allows consideration of the conventionality of certain devices under the first sub-step of 2A but not the second sub-step. Put another way, what is stopping an examiner from declaring all hardware in a claim generic and then concluding that a claim is reciting a mental process?
The USPTO also seems to be using the second sub-step as a way of carrying out the analysis of step 2B without consideration of whether elements are well-understood, routine, or conventional. In this example and others, claims are found eligible under the second sub-step because they recite an improvement to a technology. The same consideration would be applied under step 2B, though well-understood, routine, or conventional elements can be discounted unless the combination thereof leads to the improvement.
This renders the USPTO's test somewhat out of synch with that of the courts. For instance, the eligible claims from Diamond v. Diehr would be found as such under step 2B by a court's Alice analysis, but could be found eligible under step 2A by the USPTO. The same could be said about the eligible claims of DDR Holdings v. Hotels.com and BASCOM v. AT&T Mobility.
Thus, it would have been nice for the USPTO to provide a detailed example of a claim that would fail the second sub-step of 2A but pass step 2B. While the updated guidance contemplates such a possibility, Examples 37-42 do not include such a claim.
