A Proposed 35 U.S.C. § 101 Rejection Strategy in Light of In re Bilski
In light of the recent In re Bilski decision, and the USPTO’s
Instructions to Examiners
responsive thereto, the law and strategies for responding to rejections under 35 U.S.C. § 101 have changed significantly. The most significant change is that the
Machine-or-Transformation (M-or-T) Test has been struck down as the sole test for determining patentable subject matter. This is reminiscent of the Supreme Court
striking down the Teaching, Suggestion and Motivation (TSM) Test as the sole test for determining obviousness in KSR. The Supreme Court appears to dislike
inflexible tests and it seems that a pattern is emerging where rigid, black-and-white tests developed by the Court of Appeals for the Federal Circuit (CAFC) will be
struck down by the Supreme Court when the Court is presented with the opportunity. With the new Bilski decision, there appears to only be two certainties with
respect to patentable subject matter:
(1) The M-or-T Test is insufficient to establish a lack of subject matter eligibility under 35 U.S.C. § 101 alone; and
(2) Abstract ideas, laws of nature and natural phenomena are currently the only explicitly excluded subject matter under 35 U.S.C. § 101.
Nonetheless, the USPTO has instructed Examiners to continue to reject claims under 35 U.S.C. § 101 when the M-or-T Test is allegedly not met, unless "there is a clear
indication that the method is not directed to an abstract idea" (emphasis added). What would constitute such a "clear indication" is itself left unclear. The USPTO also includes the
interesting corrolary that claims meeting the M-or-T Test should still be rejected if there is a clear indication that the claims are directed
to an abstract idea. However, it is difficult to imagine claims that are tied to a specific machine or that transform an article that could be a mere mental process
(absent some form of telekinesis...). Nonetheless, the USPTO believes that applying the M-or-T Test passes the burden to Applicants to demonstrate that the claims
recite patentable subject matter.
However, there is a significant problem with the USPTO’s instructions. Merely demonstrating that claims do not meet the M-or-T Test does not show that the claims are
directed to an excluded class of subject matter. Instead, it would be necessary for the USPTO to demonstrate that the claims are either directed to abstract ideas,
laws of nature or natural phenomena. Without such a demonstration, it does not seem possible that the USPTO can make a prima facie case. Per In re
Oetiker, "the [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability”
(977 F.2d 1443, 1445 (Fed. Cir. 1992)). Many proponents of the M-or-T Test would like to use 35 U.S.C. § 101 as a more restrictive bar to appropriately limit subject
matter that can be prosecuted before the USPTO. While this would be a laudible goal if practically feasible, 35 U.S.C. § 101 must be able to anticipate the
unanticipated and as such, should not be more than a “threshold test”. As stated by the Supreme Court:
The §101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of
matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy “the conditions and requirements of this title.” §101. Those
requirements include that the invention be novel, see §102, nonobvious, see §103, and fully and particularly described, see §112.
(Slip Op. at 5, emphasis added). Due to the lack of compliance of the USPTO’s recent instructions to Examiners with the Bilski decision, it may be beneficial
to respond to 35 U.S.C. § 101 rejections along the lines of the following.
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Upon receiving a rejection that applies the M-or-T Test, Applicants may counter by arguing that the rejection does not make a prima facie case and thus does not
pass the burden to Applicants. While the USPTO is correct that the Court stated that the M-or-T Test is a “useful and important clue” for determining whether claims
recite patentable subject matter, this merely means that claims meeting the M-or-T Test are likely to recite patentable subject matter. This is not dispositive that
claims that fail the M-or-T Test do not recite patentable subject matter. Further, what constitutes an "article" and what transformations
qualify under the test were left unclear by the CAFC's Bilski decision, so the USPTO is left to attempt to determine what constitutes a transformation and what
does not. Judge Michel appears to have hinted in public statements (for instance, those made at the AIPLA Spring Meeting) that he believes the M-or-T test is broad.
However, Judge Michel is no longer on the CAFC, and how individual Examiners will apply the test in each case is a strong source of uncertainty on a case-by-case basis.
Further, the Supreme Court overruled the M-or-T Test as the sole test for determining patentable subject matter, so the application of M-or-T to allegedly pass the
burden to Applicants to demonstrate patentable subject matter is insufficient.
Rather, the only way the USPTO can currently meet its burden for rejecting claims under 35 U.S.C. § 101 is to demonstrate that the claims are directed to an abstract
idea, a law of nature or natural phenomena. Applicants can allege that applying the M-or-T Test does not meet the burden of making a prima facie case, and
further argue that the claims are not directed to an abstract idea, a law of nature or natural phenomena. While showing a “useful, concrete and tangible result” per
State Street no longer appears to be sufficient, arguing that claimed subject matter is physical and not a mere mental process should help to provide a "clear
indication" that the subject matter is not an abstract idea. That the claimed subject matter is not a law of nature or natural phenomena should be obvious in the overwhelming
majority of cases.
On pages [NUMBERS], the Office Action rejected claims [NUMBERS] under 35 U.S.C. § 101 as allegedly not reciting patentable subject matter. More specifically, the
Office Action held that because the claims allegedly do not meet the Machine-or-Transformation (M-or-T) Test, the claims are deemed not to recite patentable subject
matter and the burden is passed to Applicants to demonstrate compliance. Applicants respectfully submit that application of the M-or-T Test is insufficient to make a
prima facie rejection under 35 U.S.C. § 101 and further, Applicants’ claims are compliant with 35 U.S.C. § 101 because the claims are not directed to abstract
ideas, laws of nature or natural phenomena.
Applicants respectfully note that demonstrating a lack of compliance with the M-or-T Test is insufficient to make a prima facie rejection under 35 U.S.C. §
101. Where no prima facie case has been made, the burden cannot be passed to Applicants. In its memo to Examiners regarding Bilski, the USPTO
correctly noted that the Supreme Court stated that the M-or-T Test is a “useful and important clue” for determining whether claims recite patentable subject matter
(see In re Bilski, Slip Op. at 8). However, this merely means that claims meeting the M-or-T Test are likely to recite patentable subject matter. It is not
dispositive that claims that allegedly fail the M-or-T Test do not recite patentable subject matter. As stated by the Supreme Court,
“[a]dopting the machine-or-transformation test as the sole test for what constitutes a ‘process’ (as opposed to just an important and useful clue) violates …
statutory interpretation principles” (Slip Op. at 6-7). Rather, the only way the USPTO can currently meet its burden for rejecting claims under 35 U.S.C. § 101 is to
demonstrate that the claims are directed to an abstract idea, a law of nature or natural phenomena. These are the only classes of subject matter explicitly forbidden
by the Supreme Court as not being patent-eligible. The Supreme Court overruled the M-or-T Test as the sole test for determining patentable subject matter, so the
application of the M-or-T Test to allegedly pass the burden to Applicants to demonstrate patentable subject matter is insufficient.
In the interest of furthering prosecution, Applicants respectfully submit that the claims are patent-eligible because they are not directed to abstract ideas, laws
of nature or physical phenomena. For instance, the claimed subject matter is physical rather than being a mere mental process, and thus is not an abstract idea.
Unlike the claims at issue in Bilski, where the risk hedging method could be largely performed mentally by a human being, the claimed invention [CASE-SPECIFIC
ARGUMENTS HERE SUPPORTING THE CLAIMS NOT BEING AN ABSTRACT IDEA]. Further, the claims are not directed to laws of nature or physical phenomena. [CASE-SPECIFIC
ARGUMENTS HERE, PERHAPS ALONG THE LINES OF THE CLAIMED INVENTION ONLY BEING BROUGHT INTO EXISTENCE UPON ITS CONCEPTION AND CONSTRUCTIVE – OR ACTUAL - REDUCTION TO
PRACTICE BY APPLICANTS].
Thus, the Office Action’s application of the M-or-T Test does not constitute a prima facie rejection under 35 U.S.C. § 101 and further, the claims recite
patentable subject matter that is not directed to abstract ideas, laws of nature or physical phenomena. Accordingly, it is respectfully submitted that the rejection
is overcome and respectfully requested that the rejection be withdrawn.
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If an Advisory Action is received based on previously submitted arguments, the most cost-effective and expedient means to combat the rejection may be to file a
Pre-Appeal Brief Request for Review (PABRFR) and make similar arguments to those presented above. If successful, a PABRFR will certainly be cheaper than a full
appeal. In order to succeed with a PABRFR, Applicants must show that rejections in the Office Action contain clear error. Showing a lack of a prima facie case
and further arguing that the claims clearly recite patentable subject matter because they are not directed to an excluded class will hopefully be deemed to meet this
burden in most cases.
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Despite the Supreme Court’s clear ruling that M-or-T is not the only test for determining subject matter eligibility under 35 U.S.C. § 101, the USPTO has instructed
Examiners to reject claims under the M-or-T Test and allegedly pass the burden to Applicants to demonstrate subject matter eligibility. However, merely demonstrating
that claims do not meet the M-or-T Test does not show that the claims are directed to an excluded class of subject matter. Rather, the USPTO must demonstrate that the
claims are either directed to abstract ideas, laws of nature or natural phenomena. In responding to forthcoming rejections under 35 U.S.C. § 101, Applicants may
allege that applying the M-or-T Test does not meet the burden of making a prima facie case, and further argue that the claims are not directed to an abstract
idea, a law of nature or natural phenomena.