“If you can show that the network hardware has new features or is improved by the invention to become a more efficient tool, you can overcome a rejection of Section 101.”
Technologies such as computer networks, which, unlike software inventions, typically incorporate at least some hardware elements, may be less vulnerable to rejection under the United States Supreme Court’s decision in Alice c. CLS Bank. However, responding to these refusals when they are issued still requires finesse. In these cases, the rejections usually revolve around whether the material included in the claims serves as an improvement over the existing material or is simply used as a tool for a mental process or some other abstract idea. If the reviewer concludes that the networking hardware is merely a tool, the claims generally fail. Alice / Mayo test. However, if you can show that the network hardware has new features or is improved by the invention to become a more efficient tool, you can overcome the rejection.
Below are three examples of how applicants successfully overcome 101 failures in the computer networking field.
Technological improvements to hardware almost always overcome Section 101 rejections
In U.S. Patent Application No. 16 / 132,933 (now U.S. Patent No. 10,938,664), Examiner Douglas B. Blair rejected the Section 101 claims on the grounds that the claims state an abstract idea without much more. According to the Examiner, the claims set out a series of mathematical steps that operate on network performance data without tying these operations to practical application.
In response to the rejection, the Applicant argued that the invention improved network technology and, therefore, was considered patentable subject matter.
More specifically, the plaintiff argued:
“[The claims] are also an improvement in computer network technology. Claim 1 sets out, in part, the calculation of the network frequency distributions of a performance measure in a network, the calculation of the entity frequency distributions of the performance measure for different groupings of network entities, and identifying an outlier among the network identity groupings by calculating a change in distance measurements between the network frequency distributions and the entity frequency distributions over different time periods.
By filtering out outliers, the invention presents only the most critical information to the network administrator to identify actual network performance issues rather than noise.
In the next action, the examiner withdrew rejection 101.
The takeaway from this case is that even with network hardware, you might have to argue that the invention improves computer networking technology. Whether this improvement comes from a new feature or a better feature, you will need to indicate the specific steps claimed to provide the technological improvement.
A practical solution provided by the claimed invention can provide a path to the allocation
U.S. Patent Application Serial No. 15 / 859,448 (now U.S. Patent No. 10,735,346) claims a method of optimizing a data payload for a device within an Internet of Things (IoT). Examiner Oleg Survillo issued a rejection for subject matter ineligible for patent under Section 101. The rejection claimed that the invention only recited a mental process to prioritize the data.
In this case, the Examiner pointed out that the underlying concept of prioritization existed long before computers. As such, the prioritization process could take place entirely inside the human brain.
In response, the applicant returned the examiner’s attention to the claimed device and away from the underlying concept. The claims have been amended to include specific limitations describing the apparatus and the prioritization process. While the concept of prioritization may have existed before, the implementation of this prioritization process in an IoT device had not existed.
In particular, the applicant argued:
âThe present claims relate to IoT devices and data transmission techniques in a network of IoT devices. â¦ Many IoT devices are battery powered and tend to have limited processing resources. Additionally, a typical IoT network can include a large number of IoT devices. Therefore, energy efficiency and use of grid capacity are of greater concern in IoT networks compared to other types of computer networks. These claims state techniques that improve energy efficiency and network capacity utilization in IoT networks.
The Examiner admitted the claims after this response.
The takeaway from this case is that even though the concept behind the invention is old, you can explain how the claimed invention provides a practical solution to a new problem. This argument will ground the invention as a real concept with practical effects rather than as an abstract idea.
Evidence of improved functionality can turn abstract idea into patent eligible concept
U.S. Patent Application Serial No. 14 / 838,572 (now US Patent No. 11,005,963) claims a prefetch cache population for WAN optimization. Examiner Christopher Cadorna rejected the claims under Instruction 101 on the grounds that the claims were “directed to a judicial exception (i.e., an abstract idea) without much more.“
The applicant relied on the historic judgment of Enfish, LLC v Microsoft Corp. in developing a response to the rejection. It has been argued that the claims are similar to those of To fish in that they use a specific technique to improve the way computers transmit and receive data over a wide area network.
In this particular case, the requester was able to show that preloading the WAN optimizer results in increased network performance, which convinced the examiner to withdraw his previous refusal.
The particular improvement has been described as:
“For example, host 104 can start sending data to WAN optimizer 125 before the planned migration of the VM so that WAN optimizer 125 at least partially has a preloaded data cache for deduplication when the VM migration is triggered. Thus, deduplication will be more efficient at the start of the VM migration. â¦ Other examples of preloaded data types that can benefit from WAN optimizations might include data-level preloading (such as virtual machine migration, scheduled backup, disaster recovery machine state synchronization) or application-level caching (as in Synchronizing Active DirectoryÂ® users, database replication, etc.) â
The applicant has also amended the claims in support of its arguments to focus the claims on a specific improvement in computer technology. The Examiner agreed with the Applicant’s arguments and withdrew the Section 101 rejections.
The takeaway from this case is that if you can provide proof of improved network functionality, it can make the idea abstract as a concept eligible for patent.
Hardware details are essential
whereas the basic framework for responding to a rejection under Alice remains the same, some artistic units may lend themselves to distinct approaches due both to the nature of the inventions claimed in these arts and to the specific preferences and conventions of the examiners. Indeed, many seasoned lawyers noted the importance of using reviewer interviews or other research to find out how subject eligibility questions are interpreted within the assigned art unit as early as possible in the prosecution process.
In the case of inventions in the field of computer networking, these three actions of the office show that focusing on the hardware can be extremely important in overcoming a rejection 101. These hardware details can relate to the problem that the invention solves, the setting. implementation of the invention or the technological improvements made.
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Yvonne Morris is co-founder and CEO of IP Tools, a company founded to help lawyers respond more effectively to USPTO rejections by leveraging a wealth of publicly available but previously inaccessible information. Yvonne holds a doctorate. in history and philosophy of science. Her academic research has encompassed the complexities of knowledge conflicts in the periodical literature and scientific correspondence of the 18th and 19th centuries, a topic that she believes has a particular resonance with the patent prosecution process today.
For more information or to contact Yvonne, visit her Company Profile Page.