Further down the rabbit hole with Alice

On June 19, 2014, the Supreme Court of the United States issued a decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 573 US __(2014) (Alice). In Alice, the Supreme Court looked to the holdings in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _ (2012) (Mayo) to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. § 101.

Soon after, the United States Patent and Trademark Office (USPTO) published Preliminary Examination Instructions, but they provided little guidance to practitioners and examiners.

In mid-December 2014, the USPTO followed up the initial instructions with the Interim Guidance on Patent Subject Matter Eligibility. The Federal Register published an article announcing the Interim Guidance, providing a good summary and examples of both Nature-Based Products and Abstract Ideas. The USPTO also provides official examples of Nature-Based Products and Abstract Ideas.

The USPTO will accept written comments on the Interim Eligibility Guidance and Claim Example sets via email at 2014_interim_guidance@uspto.gov until March 16, 2015. For more information on how to submit comments, visit the USPTO website.

Regarding Abstract Ideas, the USPTO has provided the following examples.

Software inventions that are not directed to an abstract idea:

1. Isolating and Removing Malicious Code from Electronic Messages.
2. E-Commerce Outsourcing System/Generating a Composite Web Page.
3. Digital Image Processing.
4. Global Positioning System.

Software inventions that are directed to an abstract idea:

5. Digital Image Processing.
6. The Game of Bingo.
7. E-Commerce providing Transaction Performance Guaranty.
8. Distribution of Products over the Internet.

Notice that the USPTO has provided examples that may be patent eligible or ineligible (Digital Image Processing). For examples 3 and 5, the USPTO states that both are directed towards using mathematical operations on data. However, the USPTO applied the “significantly more” concept from Alice to distinguish example 3. More specifically, the USPTO states that example 3 uses additional steps that, “tie the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. These steps add meaningful limitations to the abstract idea of generating the blue noise mask and therefore add significantly more to the abstract idea than mere computer implementation.” (See Abstract Ideas Pg. 9 First full paragraph).

Below are representative claims for examples 3 and 5.

Claim from Example 3 (eligible)

1. A computer-implemented method for halftoning a gray scale image, comprising the steps of:

• Generating, with a processor, a blue noise mask by encoding changes in pixel values across a plurality of blue noise filtered dot profiles at varying gray levels;
• Storing the blue noise mask in a first memory location;
• Receiving a gray scale image and storing the gray scale image in a second memory location;
• Comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image to a threshold number in the corresponding position of the blue noise mask to produce a binary image array; and
• Converting the binary image array to a halftoned image.

Claim from Example 5 (ineligible)

10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

• Generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
• Generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and
• Combining said first and second data into the device profile.