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).
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. Context matters.
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 so, 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 the claim involves such an exception, 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.
Hypothetical Background
Example 37 relates to relocation of icons on a graphical user interface (GUI). The background provided by the USPTO is as follows (abbreviated to focus on key aspects):
[C]omputer users may have a large number of icons on their display, making it difficult to find the icons most used. The typically available ways to organize icons are alphabetically, by file size, and by file type. If a computer user wants a non-typical arrangement of icons, the user would need to manually manipulate the icons on their display.
Accordingly, applicant's invention addresses this issue by providing a method for rearranging icons on a [GUI], wherein the method moves the most used icons to a position on the GUI, specifically, closest to the "start" icon of the computer system, based on a determined amount of use.
Claim 1
Claim 1 of Example 37 recites:
A method of rearranging icons on a graphical user interface (GUI) of a computer system, the method comprising:
receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon;
determining, by a processor, the amount of use of each icon over a predetermined period of time; and
automatically moving the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use.
Applying the first sub-step of 2A, the USPTO states that claim 1, under its broadest reasonable interpretation, "covers performance of the limitation in the mind but for the recitation of generic computer components." In other words, "nothing in the claim element precludes the step from practically being performed in the mind," and "[t]he mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping." Thus, the claim recites an abstract idea.
Moving on to the second sub-step, the USPTO notes that the claim "recites the combination of additional elements of receiving, via a GUI, a user selection to organize each icon based on the amount of use of each icon, a processor for performing the determining step, and automatically moving the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use." Thus, the claim integrates the mental process into a practical application by reciting "a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior systems." As a result, the claim is eligible under step 2A because it is not directed to a judicial exception, and step 2B need not be applied.
Claim 2
Claim 2 of Example 37 recites:
A method of rearranging icons on a graphical user interface (GUI) of a computer system, the method comprising:
receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon;
determining the amount of use of each icon using a processor that tracks how much memory has been allocated to each application associated with each icon over a predetermined period of time; and
automatically moving the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use.
Key differences between claim 2 and claim 1 are highlighted.
Applying the first sub-step of 2A, the USPTO states that claim 2 does not recite any of the three types of abstract ideas. According to the USPTO, the determining step now "requires action by a processor that cannot be practically applied in the mind" because it involves "a processor accessing computer memory indicative of application usage." The USPTO further states that the claim does not recite either of the other two types of abstract ideas (mathematical relationships and methods of organizing human activity) either. Like claim 1, claim 2 is eligible under step 2A because it is not directed to a judicial exception, and step 2B need not be applied.
Claim 3
Claim 3 of Example 37 recites:
A method of ranking icons of a computer system, the method comprising:
determining, by a processor, the amount of use of each icon over a predetermined period of time; and
ranking the icons, by the processor, based on the determined amount of use.
Applying the first sub-step of 2A, the USPTO states that claim 3, like claim 1, "covers performance of the [determining] limitation in the mind but for the recitation of generic computer components." Therefore, claim 3 recites a mental process. The USPTO notes that the ranking limitation also recites a mental process because "the claim encompasses the user thinking that the most-used icons should be ranked higher than the least-used icons."
Under the second sub-step of 2A, the USPTO finds that the only additional element is the processor, and that "[t]his generic processor limitation is no more than mere instructions to apply the exception using a generic computer component." Thus, the claim does not integrate the abstract idea of the recited mental process into a practical application thereof, and the claim is therefore directed to an abstract idea.
Invoking step 2B, the USPTO similarly concludes that "the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component." Thus, the 2B analysis follows that of the second sub-step of 2A, resulting in the claim not containing significantly more than the abstract. Accordingly, the claim is patent-ineligible.
Analysis
The USPTO makes it clear in this example that the mental process category of abstract ideas is not meant to be taken literary. It is not limited to steps that are carried out wholly in the human mind. Instead, a step that (in theory) could be performed in the mind but is recited as being performed by a processor is still considered a mental step. This is a bit of legal fiction to note well.
The distinction between claims 1 and 2 is also quite fine. Claim 1 recites "determining the amount of use of each icon over a predetermined period of time" while claim 2 recites "the amount of use of each icon using a processor that tracks how much memory has been allocated to each application associated with each icon over a predetermined period of time. While claim 2 is narrower than claim 1, it is not 100% clear why claim 2 is not also reciting a mental process.
The USPTO's justification for concluding that it does not is that claim 2 involves "a processor accessing computer memory indicative of application usage." But if we are allowed to ignore the literary meaning of the term "processor" in these claims, why is the processor's use of memory not ignored as well? Why isn't the "computer" qualifier disregarded to find the term "memory" broad enough to encompass human memory?
Perhaps the answer is that the combination of a processor and the specific use of the memory is enough to find the claim not directed to a mental process. But the USPTO is silent in this regard, and it remains difficult to know where to draw the line.
Further, the determination of whether a recited abstract idea is integrated into a practical application is similarly vague. In claim 1, such an integration is found because the claim recites specific requirements that leads to an improvement over the prior art. In claim 3, however, the apparent lack of recited detail was enough to conclude that any such integration was de minimis at best. Perhaps the absence of any movement of the icons damned claim 3 to abstractness hell.
From the outset, the Alice test has required a certain suspension of logic in order to follow the Supreme Court's reasoning. By expanding the test with two additional sub-steps, the USPTO is attempting to provide clarity. Unfortunately, the USPTO appears to be adopting the same legal fictions that have made the post-Alice § 101 inquiry so subjective in the first place.
