Section 101 has become a critical battleground for patent professionals seeking to secure protection for software-related inventions. The challenge lies in distinguishing innovations that genuinely contribute to technological progress from those deemed mere abstract ideas. This post aims to shed light on a specific exception recognized by the Federal Circuit — the improvement of processing efficiency of the computer itself — and the delicate balance between said enhancement and the ineligible mere use of the computer as a tool.
Section 101 of the U.S. patent law sets forth the statutory subject matter eligibility requirements for patent protection. Over the years, the Federal Circuit has clarified certain exceptions to Section 101 rejections (or situations in which Section 101 does not apply), offering patent professionals insights into navigating the patent landscape. One such situation olves inventions that enhance the processing efficiency of the computer itself. The Federal Circuit has acknowledged that if an invention results in a tangible improvement in how a computer performs its functions, it may overcome Section 101. As with most 101 issues, the issue generally turns on the technological aspects of the invention and demonstrating a direct connection between claim elements and solving a technical problem.
However, to be successful in this approach, the claims must provide an improvement in processing efficiency that is more than merely using the computer as a tool. One way to formulate the distinction is whether the claims articulate a transformative impact on the computer's functionality or merely employ the computer as a generic tool to execute routine tasks.
The MPEP attempts to explain the issue as follows (some citations omitted):
MPEP 2106.05(f)
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
To illustrate this distinction, two recent PTAB examples are provided where in each case the applicant was unsuccessful, even after explaining how the specific claim elements improved processing efficiency of the computer itself. These cases illustrates that not insignificant hurdle in utilizing such arguments at the USPTO.
In Appeal 2022-004688, Application 17/107,712, the invention related to a computer-implemented method of calculating credit values in incentive-based compensation systems and updating a data store of digitally stored credit values.
Claim 1: A computer-implemented method of calculating credit values in incentive-based compensation systems and updating a data store of digitally stored credit values, the method comprising:
[i] creating and digitally storing, in an electronic digital data store, over a million credit rule records comprising rule expressions for calculating credit values, over a million person assignment records that associate credit rule records with person records, and over a million order records, the order records each comprising an association of an order identifier with at least an order amount;
[ii] receiving a request to execute a change of a credit rule, person assignment, or order;
[iii] in real time in response to the request, executing stored program instructions that are programmed to, in response to a request to execute the change of the credit rule:
[(iii)(a)] evaluate the credit rule against all orders then currently stored in the data store to determine a result set of matching orders, and
[(iii)(b)] digitally append in the data store one or more credit value records each comprising a credit value, each credit value being calculated based on a rule expression of the credit rule, each credit value record being digitally linked to an order identifier of one of the matching orders, to the person assignment, and to the credit rule;
[iv] repeating the receiving and executing steps, in which execution of the evaluate and determine step always causes to digitally append the one or more credit value records in the data store and not to delete credit value records in the data store and not to update existing credit value records in the data store.
The applicant argued that the claims include a specific solution to solve issues with customers that have millions of orders to process against thousands of rules. Specifically, the Applicant focused on the cost of processing resources necessary using prior art methods that limited the ability to provide a real-time response, and how the claims solve the problem by providing an improved methodology to compute credits at large scale while providing a real-time response. The PTAB disagreed:
… the claimed computing device is employed only for its most basic function—performing
calculations with respect to crediting rules—and as such, the recitation of such computing device does not impose meaningful limits on the scope of those claims.
In Appeal 2023-002581, Application 17/370,531, the invention related to real-time message
display decision-making.
Claim 1. A computing system, comprising:
a processor;
a communications module coupled to the processor; and
a memory coupled to the processor, the memory storing instructions that, when executed, configure the processor to:
authenticate a session associated with a data record;
receive, via the communications module and from a server associated with the authenticated session, a signal that includes a user interface associated with the authenticated session and at least a first message object;
display the user interface, the user interface displaying one or more elements that include data associated with the data record;
analyze metadata of the first message object to identify one or more display rules associated with the first message object;
determine, based on at least one of the elements displayed on the user interface associated with the authenticated session, that the at least one of the elements satisfies the one or more display rules; and
responsive to determining that the at least one of the elements satisfies the one or more display rules, display the first message object on the user interface associated with the authenticated session.
Here, the PTAB found that “at least the ‘authenticate,’ ‘analyze,’ and ‘determine’ steps, as recited in claim 1 recite abstract mental processes that can be performed by the human mind.” The applicant argued that nevertheless the claims go beyond generally linking the use of the judicial exception to a particular technological environment. The specification included specific language in this regard, including:
… [s]ince the message objects include metadata identifying one or more display rules associated with [sic] therewith, the client device is able to inspect one or more elements currently being displayed on the user interface to make a real-time or near real-time decision as to whether or not to display the message object. … [and] since the one or more elements displayed on the user interface may be associated with one or more external systems, the client device is able to obtain real-time or near real-time data without sending separate signals requesting data from the one or more external systems.
The PTAB nevertheless found that this was mere use of a computer as a tool (citations omitted):
Claim 1 as a whole merely uses instructions to implement an abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. We agree with the Examiner that “‘claiming the improved efficiency inherent with applying the abstract idea on a computer’ does not provide an inventive concept. Here, Appellant merely seeks to claim the improved data processing efficiency inherent with applying an improvement to the abstract idea itself
on a computer.
Navigating the intricacies of Section 101 in the context of abstract idea rejections requires a nuanced understanding of the above issues and their applications. While the improvement of processing efficiency stands as a viable pathway, patent professionals should be cautious not to fall into the trap of mere tool usage. These PTAB examples serve as lessons, emphasizing the relatively high bar of clearly demonstrating how a software invention brings about a transformative enhancement to the computer itself. In the evolving landscape of patent law, staying abreast of these nuances can help in successfully securing and defending software-related patents.