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, 39, and 40 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.
Example 41
Example 41 relates to cryptographic communication. The background provided by the USPTO is as follows (abbreviated to focus on key aspects):
It is critical that data being sent from a sender to a recipient is unable to be intercepted and understood by an intermediate source. In addition, authentication of the source of the message must be ensured along with the verification of and security of the message content. Various cryptographic encoding and decoding methods are available to assist with these security and authentication needs. However, many of them require expensive encoding and decoding hardware as well as a secure way of sharing the private key used to encrypt and decrypt the message.
The invention improves upon prior methods for establishing cryptographic communications because by using only the variables [n=p*q] and e (which are publicly known), a plaintext can be encrypted by anyone. The variables p and q are [prime numbers and] only known by the owner of the decryption key d and are used to generate the decryption key (private key d is not claimed below). Thus, the security of the cipher relies on the difficulty of factoring large integers by computers, and there is no known efficient algorithm to recover the plaintext given the ciphertext and the public information (n, e).
The claim of Example 41 recites:
A method for establishing cryptographic communications between a first computer terminal and a second computer terminal comprising:
receiving a plaintext word signal at the first computer terminal;
transforming the plaintext word signal to one or more message block word signals MA;
encoding each of the message block word signals MA to produce a ciphertext word signal CA, whereby CA=MAe (mod n);
where CA is a number representative of an encoded form of message word MA;
where MA corresponds to a number representative of a message and 0 ≤ MA ≤ n-1;
where n is a composite number of the form n=p*q;
where p and q are prime numbers;
where e is a number relatively prime to (p-1)*(q-1); and
transmitting the ciphertext word signal CA to the second computer terminal over a communication channel.
Applying the first sub-step of 2A, the USPTO states that this claim recites a mathematical concept. Particularly, "the encoding step is determined to recite a mathematical concept because the claim explicitly recites a mathematical formula or calculation."
Moving on to the second sub-step of 2A, the USPTO finds that the additional elements integrate this mathematical concept into a practical application thereof. The USPTO states that "the combination of additional elements use the mathematical formulas and calculations in a specific manner that sufficiently limits the use of the mathematical concepts to the practical application of transmitting the ciphertext word signal to a computer terminal over a communication channel." According to the USPTO, the claimed invention secures communications "so that a ciphertext word signal can be transmitted between computers of people who do not know each other or who have not shared a private key between them in advance of the message being transmitted, where the security of the cipher relies on the difficulty of factoring large integers by computers."
Accordingly, the claim is not directed to an abstract idea, which renders it patent-eligible under step 2A. No step 2B analysis need take place.
Example 42
Example 42 relates to transmission of notifications when medical records are updated. The background provided by the USPTO is as follows (again, abbreviated to focus on key aspects):
Patients with chronic or undiagnosed illnesses often must visit several different medical providers for diagnosis and treatment. These physicians may be physically separate from each other and unaware of each other. During a visit, each medical provider records information about the patient's condition in their own local patient records. These records are often stored locally on a computer in a non-standard format selected by whichever hardware or software platform is in use in the medical provider's local office. It is difficult for medical providers to share updated information about a patient's condition with other health care providers using current patient management systems, due to the above challenges.
To solve this problem, applicant has invented a network-based patient management method that collects, converts and consolidates patient information from various physicians and health-care providers into a standardized format, stores it in network-based storage devices, and generates messages notifying health care providers or patients whenever that information is updated.
Claim 1 of Example 41 recites:
A method comprising:
a) storing information in a standardized format about a patient's condition in a plurality of network-based non-transitory storage devices having a collection of medical records stored thereon;
b) providing remote access to users over a network so any one of the users can update the information about the patient's condition in the collection of medical records in real time through a graphical user interface, wherein the one of the users provides the updated information in a non-standardized format dependent on the hardware and software platform used by the one of the users;
c) converting, by a content server, the non-standardized updated information into the standardized format,
d) storing the standardized updated information about the patient's condition in the collection of medical records in the standardized format;
e) automatically generating a message containing the updated information about the patient's condition by the content server whenever updated information has been stored; and
f) transmitting the message to all of the users over the computer network in real time, so that each user has immediate access to up-to-date patient information.
Applying the first sub-step of 2A, the USPTO states that this claim recites a method of organizing human activity. Notably, the method "allows for users to access patients' medical records and receive updated patient information in real time from other users which is a method of managing interactions between people." Therefore, the claim 1 recites an abstract idea.
Moving on to the second sub-step of 2A, the USPTO finds that the claim integrates its additional elements into a practical application of this abstract idea. The USPTO writes that "the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user." Therefore, the claim is not directed to an abstract idea and thus patent-eligible. No step 2B analysis need take place.
Claim 2 of Example 41 recites:
A method comprising:
a) storing information about a patient's condition in a plurality of network-based non-transitory storage devices having a collection of medical records stored thereon;
b) providing access, by a content server, to users so that any one of the users can update the information about the patient's condition in the collection of medical records, and;
c) storing the updated information about the patient's condition in the collection of medical records in the plurality of network-based non-transitory storage devices.
In addition to being less detailed than claim 1, claim 2 also fails to recite that the medical records are converted to a standard format or that updates are transmitted in real time to other users.
Applying the first sub-step of 2A, the USPTO states that claim 2 recites a method of organizing human activity, largely based on the same grounds as claim 1. The USPTO notes that "[t]he mere nominal recitation of a generic content server and generic network-based storage devices does not take the claim out of the methods of organizing human interactions grouping." Thus, the claim recites an abstract idea.
For the second sub-step of 2A, the USPTO concludes that the additional elements do not integrate this abstract idea into a practical application thereof. Particularly, "[t]he claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing medical records update process," and "[s]imply implementing the abstract idea on a generic computer is not a practical application of the abstract idea."
Moving on to step 2B, the USPTO states that "the claim as a whole merely describes how to generally apply the concept of updating medical records in a computer environment." Since this does not add significantly more to the abstract idea, the claim lacks an inventive concept and is ultimately ineligible.
Analysis
After reviewing Examples 41 and 42, one has to wonder if the Office's approach in the Revised Guidance can be rectified with how examiners have been applying the Electric Power Group v. Alstom S.A. case. For those of you who have not yet experienced the distinct pleasure of a rejection based on Electric Power Group, some examiners and/or art units have taken the position that it stands for the notion that any collecting of data, processing of that data, and providing of a result of the processing (all abstract ideas) is virtually per se ineligible. While this expansive view of Electric Power Group is rebuttable, it does tend to cover the essence of many computer-implemented inventions.
Both of the examples herein would have been candidates for an Electric Power Group rejection. But two of these three claims are not directed to an abstract idea, according to the USPTO's new view of the world. Will the courts agree? Probably not. Thus, applicants must proceed with caution and try to draft claims that will satisfy the Alice test (to the extent doing so in any reliable fashion is possible), not just the USPTO's version thereof.
To sum up this series of articles on Revised Guidance, the USPTO should be commended for attempting to bring some clarity and consistency to an area of the law that has so far resisted such efforts. But the new prongs of step 2A open new cans of worms, and it remains to be seen whether the USPTO can apply its own test in a harmonious manner.
