Ruttler Mills PLLC

Seattle Patent Attorneys and Trademark Lawyers

206-838-6400 Complimentary 15 Minute Consultation

Overcoming Section 101 Rejections

Posted Tuesday, December 9, 2014 by Jim Ruttler

After the Supreme Court decision in Alice v. CLS Bank there has been quite a bit of confusion over what constitutes patent eligible subject matter with respect to computer related inventions. The Patent Office is expected to release examining guidelines any day now. Until that time, it may help to look at the claims that the courts have pointed to as constituting eligible subject matter. The first claim is from Diamond v. Diehr, which the Supreme Court specifically identified in Alice as an example of eligible subject matter:

  1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
    providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant © unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
    initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
    constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
    constantly providing the computer with the temperature (Z),
    repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is ln(v)=CZ+x where v is the total required cure time,
    repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
    opening the press automatically when a said comparison indicates completion of curing.

Most of this claim is directed toward mathematical calculations, which we know are not patent eligible. However, the Supreme Court indicated that this claim was eligible despite the inclusion of the mathematical calculations because the completion of the curing transformed or reduced an article to a different state or thing. The second patent eligible claim comes from a recent Federal Circuit decision in DDR Holdings.

  1. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
    (a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
    (i) wherein each of the first web pages belongs to one of a plurality of web page owners;
    (ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
    (iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
    (b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
    (i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
    (ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
    (iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
    (iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.

As you can see, there is arguably nothing in this claim like that results in a physical transformation of a good, like the curing process in Diehr. Nonetheless, the Court held this claim to be patent eligible because it solved a problem in computer networks that has no real-world analog. Namely, the problem is of retaining internet traffic, which is a problem that is unique to computers and not something that was solved in the real-world.

As we wait for more guidance from the Patent Office and the courts, these two claims serve as examples of subject matter that is patent eligible. One claim transforms an article into a different state or thing and the other solves a problem that is unique to computer networks.

Overcoming Section 101 Rejections ›› Ruttler Mills PLLC