MPEP January 2018 Revision: Improvement of other technology or technical field

The January 2018 revision of the MPEP includes the Office’s previous guidance to examiners on 101 issues.  This guidance previously was spread across multiple memos and training materials, so practitioners and examiners will appreciate having it all in one place.

The revised MPEP materials include many things that will be helpful to applicants facing rejections under 101.  For example, most practitioners by now recognize that one way to have patentable subject matter under Step 2B of the 101 framework for the claim to improve the functioning “of the computer itself.”  However, Alice also allows for the case where the claim purports to improve the functioning of “any other technology or technical field.”  Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2359, 110 USPQ2d 1976, 1984 (2014).

The MPEP revision recognizes this, and provides a series of examples of improvements to other technology or technical field pulled from Federal Circuit cases:

  1. 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.  (Diamond v. Diehr)
  2. New telephone, server, or combination thereof (TLI Communications LLC v. AV Auto. LLC)
  3. An advance in the process of downloading content for streaming (Affinity Labs of Tex. v. DirecTV, LLC)
  4. Improved, particular method of digital data compression (DDR Holdings, LLC. v. Hotels.com, L.P and Intellectual Ventures I v. Symantec Corp)
  5. Particular method of incorporating virus screening into the Internet (Symantec Corp)
  6. Components or methods, such as measurement devices or techniques, that generate new data (Electric Power Group, LLC v. Alstom)
  7. Particular configuration of inertial sensors and a particular method of using the raw data from the sensors (Thales Visionix, Inc. v. United States)
  8. 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 (Trading Techs. Int’l, Inc. v. CQG, Inc.)
  9. Improved process for preserving hepatocytes for later use (Rapid Litig. Mgmt. v. CellzDirect, Inc).

MPEP 2106.05(a).  Applicants facing rejections under 101 may want to draw parallels between their inventions and these examples, especially where their specification indicates that the invention provides a technical benefit.

Notably, merely implementing an improved method on a generic, general-purpose computer may be insufficient – the MPEP notes that the claims (not just the specification!) must recite 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.”  Applicants filing today would be well-advised to include any indication of this type of improvement at least in the specification, in case it is needed later to overcome 101 rejections.  For pre-Alice applications, the situation is a bit more nuanced, and applicants may need to find clever ways to re-cast their existing claims in terms of a technical advantage provided by the patentable features, rather than merely reciting the features themselves.

Aaron Kamlay