2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field
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While improvements were evaluated in Alice Corp. as relevant to the search for an inventive concept (Step 2B), several decisions of the Federal Circuit have also evaluated this consideration when determining whether a claim was directed to an abstract idea (Step 2A).
- Thus, an examiner may evaluate whether a claim contains an improvement to the functioning of a computer or to any other technology or technical field at Step 2A or Step 2B, as well as when considering whether the claim has such self-evident eligibility that it qualifies for the streamlined analysis.
In finding that a claim is directed to such an improvement, the Federal Circuit has relied on the focus of the claimed invention.
- As such, it is critical that the claim be accorded its broadest reasonable interpretation (BRI) to determine the focus of the claim as a whole.
- In accordance with principles of claim construction, the specification should be consulted in determining the claim’s broadest reasonable interpretation and whether a claimed invention purports to improve computer-functionality or existing technology.
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.
- That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.
- For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea.
- In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible.
After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the improvement in technology.
- The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification).
- In making this determination, it is critical that examiners look at the claim “as a whole,” in other words, the claim should be evaluated “as an ordered combination, without ignoring the requirements of the individual steps.”
- When performing this evaluation, examiners should be “careful to avoid oversimplifying the claims” by looking at them generally and failing to account for the specific requirements of the claims.
An important consideration in determining whether a claim is directed to an improvement in technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
- In this respect, the improvement consideration overlaps with other Step 2B considerations, specifically the particular machine consideration, and the mere instructions to apply an exception consideration.
- Thus, evaluation of those other considerations may assist examiners in making a determination of whether a claim satisfies the improvement consideration.
I. IMPROVEMENTS TO COMPUTER FUNCTIONALITY
In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool.
In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database.
- The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality.
- It was the specification’s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility.
- The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts.
Examples that the courts have indicated may show an improvement in computer-functionality:
- i. A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage
- ii. Inventive distribution of functionality within a network to filter Internet content
- iii. A method of rendering a halftone digital image
- iv. A distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records
- v. A memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance
- vi. Technical details as to how to transmit images over a cellular network or append classification information to digital image data
- vii. Particular structure of a server that stores organized digital images
- viii. A particular way of programming or designing software to create menus
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation.
- That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology.
- Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology.
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality:
- i. Generating restaurant menus with functionally claimed features
- ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer
- iii. Merely using a computer to perform an abstract idea, e.g., applying the functionality of a computer and bar code system in the context of processing returned mail
- iv. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase
- v. Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone
II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD
The courts have also found that improvements in technology beyond computer functionality may demonstrate patent eligibility.
In McRO, the Federal Circuit held claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules to be patent eligible under 35 U.S.C. 101, because they were not directed to an abstract idea.
The basis for the McRO court's decision was that the claims were directed to an improvement in computer animation and thus did not recite a concept similar to previously identified abstract ideas.
The court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated.
The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.
The McRO court also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome, and thus were not directed to an abstract idea.
Examples that the courts have indicated may be sufficient to show an improvement in existing technology include:
- i. Particular computerized method of operating a rubber molding press, e.g., a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art
- ii. New telephone, server, or combination thereof
- iii. An advance in the process of downloading content for streaming
- iv. Improved, particular method of digital data compression
- v. Particular method of incorporating virus screening into the Internet
- vi. Components or methods, such as measurement devices or techniques, that generate new data
- vii. Particular configuration of inertial sensors and a particular method of using the raw data from the sensors
- viii. A specific, structured graphical user interface that improves the accuracy of trader transactions by displaying bid and asked prices in a particular manner that prevents order entry at a changed price
- ix. Improved process for preserving hepatocytes for later use
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method.
- Merely adding generic computer components to perform the method is not sufficient.
- Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
- i. A commonplace business method being applied on a general purpose computer
- ii. Using well-known standard laboratory techniques to detect enzyme levels in a bodily sample such as blood or plasma
- iii. Gathering and analyzing information using conventional techniques and displaying the result
- iv. Delivering broadcast content to a portable electronic device such as a cellular telephone, when claimed at a high level of generality
- v. A general method of screening emails on a generic computer
- vi. An advance in the informational content of a download for streaming
- vii. Selecting one type of content (e.g., FM radio content) from within a range of existing broadcast content types, or selecting a particular generic function for computer hardware to perform (e.g., buffering content) from within a range of well-known, routine, conventional functions performed by the hardware.
