Software Patent Claims

What is an Abstract Idea

• Mathematical concepts: mathematical relationships
• Mathematical formulas or equations
• Mathematical calculations
• Mental processes: concepts performable in the human mind (even with paper and pencil or a computer)
• Certain methods of organizing human activity: fundamental economic principles
• Commercial interactions
• Managing relationships between people
• 2019 USPTO REVISED GUIDANCE refinement: the USPTO narrowed 'abstract ideas' to three specific groupings above
• A claim is NOT directed to an ineligible abstract idea if it does not fall within these three specific categories
• STEP 2 — DOES THE CLAIM HAVE AN 'INVENTIVE CONCEPT'?: Step 2A Prong 2: does the claim integrate the abstract idea into a practical application? (positive indicator: technical improvement; specific technical solution; specific machine; transformation)
• Step 2B: if no practical application, does the claim have additional elements that amount to 'significantly more' than the abstract idea? (conventional computer functions = NOT significantly more; specific non-routine technical steps = possibly significantly more)

Current State

• The Federal Circuit applies Alice strictly
• Approximately 60-70% of appealed software claims have been found ineligible since Alice
• District courts and PTAB also apply Alice to invalidate software patents post-grant.

The 2019 USPTO Revised Patent Subject Matter Eligibility Guidance

• Issued January 7, 2019
• Applies to all USPTO examination
• Courts are NOT bound by this guidance (they continue to apply Alice as interpreted by the Federal Circuit)

Step 2A Prong 1 (Identify if Claim Recites an Abstract Idea)

• The guidance narrowed abstract ideas to THREE specific groupings: (1) mathematical concepts: mathematical relationships
• Mathematical formulas or equations
• Mathematical calculations
• (2) mental processes: concepts that can be practically performed in the human mind (including with pen and paper; or with a basic computer)
• (3) certain methods of organizing human activity: fundamental economic principles or practices
• Commercial or legal interactions
• Managing personal behavior or relationships

Key Change

• If the claim DOES NOT recite a concept falling within these three groupings, it is NOT directed to an abstract idea → eligible (move to step 1 of the larger framework)
• This means claims clearly directed to technical processes or systems NOT involving math/mental processes/economic organizing are potentially eligible without further analysis

Step 2A Prong 2 (Practical Application Integration)

• Even if the claim recites an abstract idea, it is eligible if the claim as a whole integrates the abstract idea into a PRACTICAL APPLICATION
• Indicators of practical application: improvement to the functioning of a computer or another technology or technical field
• Specific machine that is integral to the claim (not incidental)
• Transformation or reduction of a particular article
• Application of the abstract idea with a particular machine (not a generic computer)

Step 2B (Significantly More)

• If no practical application → does the claim have additional elements beyond the abstract idea that are significantly more? conventional computer operations = NOT significantly more (Alice holding)
• Non-conventional and non-generic combination of computer components performing non-routine functions = possibly significantly more.

Strategy 1 — Technical Improvement Framing

• Frame the invention as a specific technical improvement to computing technology
• Not just 'doing X on a computer' but 'improving how computers do X'

Examples

• Not 'a method of encrypting data using a computer' but 'a method of reducing memory usage in encryption by performing in-place XOR operations on a circular buffer without additional storage allocation'
• The technical improvement is to the computer system itself (memory efficiency; processing speed; throughput; latency)
• Effective technical improvement frames: improved network throughput
• Reduced latency
• Reduced memory consumption
• Improved rendering performance
• Improved battery life
• Faster database queries

Strategy 2 — Specific Technical Elements

• Include specific technical components
• Don't rely on a 'generic processor'
• Claim specific processors (GPU-based; FPGA-based; neural processing unit)
• Specific memory architectures
• Specific data structures (hash tables; B-trees; binary space partitions)
• Specific communication protocols
• Specific hardware interfaces

Strategy 3 — Ordered Combination of Technical Steps

• Identify the specific ordered combination of technical steps that produces the technical benefit
• The combination may be non-obvious even if individual steps are known
• Specify the sequence and dependency between steps

Strategy 4 — Input/output Transformation

• Focus on a specific transformation of a specific type of data or physical article
• A claim that transforms real-world data (sensor data; image data; network packets) into a specific useful result is more likely to be eligible than an abstract manipulation of generic data

Strategy 5 — Avoid Purely Functional Language

• 'a module configured to analyze data and generate a report' is vague and abstract
• 'a processor configured to execute a sliding-window Fourier transform on received audio samples at 44.1 kHz sample rate to identify frequency components above 8 kHz and output a filtered audio stream' is specific and technical.

Method Claims

• 'a method comprising: receiving [specific input]
• Processing [specific technical operation]
• Outputting [specific result]'
• Method claims define the steps of the software process
• Infringed when someone performs the method
• Must satisfy § 101 eligibility independently

System/apparatus Claims

• 'a system comprising: at least one processor
• Memory storing instructions that when executed cause the processor to perform [specific technical operations]'
• System claims define the hardware + software combination
• Same inventive concept as the method but expressed as a structural claim

Computer-readable Medium (CRM) Claims

• 'a non-transitory computer-readable medium storing instructions that, when executed by a processor, cause the processor to perform [specific operations]'
• CRM claims are important for software distributed as code (downloads; apps; firmware)
• 'non-transitory' is required to exclude transient signals (Beauregard claims)

Claim Hierarchy

• Claim 1 (independent method): broadest
• Covers the method at highest level of abstraction consistent with eligibility
• Claim 2-5 (dependent method): add specific technical implementations
• Claim 6 (independent apparatus/system): same invention in apparatus form
• Claims 7-10 (dependent apparatus): technical implementations
• Claim 11 (independent CRM): same invention as stored instructions
• Multiple independent claims ensure that invalidation of one type does not eliminate protection

Alice Consistency

• All three claim types must independently satisfy § 101
• If the method claim recites the technical improvement, the system and CRM claims must also capture the technical improvement (not just 'a system that performs the method' in the abstract)

AI and Machine Learning Claims

• Claim the specific training method (training data types; loss function; optimization algorithm)
• Claim the specific inference architecture (layer types; attention mechanisms; specific transformations)
• Avoid claiming 'using AI' without technical specificity — that is abstract.

Analyzing the Rejection

• Identify which step the examiner rejected at (Step 2A Prong 1; Prong 2; or Step 2B)
• Understand which abstract idea category the examiner identified (mathematical concept; mental process; economic organizing)
• Determine whether the examiner applied the 2019 Revised Guidance correctly
• ARGUMENT-ONLY RESPONSE (preferred if possible): argue that the claims do NOT recite the identified abstract idea OR that they integrate the abstract idea into a practical application

Prong 1 Argument

• The claim does not fall within any of the three abstract idea groupings
• It recites a specific technical process or system, not a mathematical concept, mental process, or method of organizing human activity

Prong 2 Argument

• Even if abstract, the claim integrates the abstract idea into a practical application because [describe the specific technical improvement; specific machine; transformation]
• Cite MPEP 2106.05(a) improvements to technology
• Cite Federal Circuit cases with favorable outcomes: Enfish v. Microsoft (self-referential table improves database performance)
• McRO v. Bandai Namco (specific rules for character lip-sync)
• Core Wireless v. LG Electronics (specific interface for small-screen applications)
• CLAIM AMENDMENT APPROACH (if arguments insufficient): add specific technical elements that clearly remove the claim from abstract idea territory
• Add the specific technical improvement language ('wherein the method reduces cache misses by...')
• Add specific hardware elements ('wherein the processor is an application-specific integrated circuit (ASIC) configured to...')

Examiner Interview

• Request an examiner interview before filing a response to align on what specific technical elements would overcome the rejection
• This saves amendment cycles

After-final Options

• File an RCE after a final rejection to re-open prosecution
• Consider appeal to PTAB if arguments are strong and examiner is incorrectly applying the 2019 Revised Guidance
• Include declaration evidence (§ 1.132) about the technical improvement if commercial or technical evidence supports it.