The Software IP Report

Can Arguments in a Patent Specification Overcome Alice?

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

The drafters of U.S. Patent No. 9,220,651 took an interesting approach to try to circumvent defeat of their claims as directed to an unpatentable abstract idea under 35 U.S.C. § 101.  The application for the ‘651 patent was filed in 2012 in the interregnum between Bilski and Alice.  In their specification, directed to an automated, self-propelled hospital patient transport bed, the applicant presented arguments – five columns’ worth – to the effect that, functional language notwithstanding, their claims were not directed to a patent-ineligible abstract idea.

The core of the ‘651 patent specification’s argument was this (go to the above link and search for “abstract ideas” to find it, or find the printed patent and read starting at column 36, line 66):

Importantly, although the operational/functional descriptions described herein are understandable by the human mind, they are not abstract ideas of the operations/functions divorced from computational implementation of those operations/functions. Rather, the operations/functions represent a specification for the massively complex computational machines or other means. As discussed in detail below, the operational/functional language must be read in its proper technological context, i.e., as concrete specifications for physical implementations.

What followed was a lot of basic explanation about how programming languages, and the hardware used to execute them, are configured.  The thrust seems to be that, because computer hardware and software does complicated and concrete things,

far from being understood as an abstract idea, it can be recognizes [sic] that a functional/operational technical description as a humanly-understandable representation of one or more almost unimaginably complex and time sequenced hardware instantiations.

Well, true enough – much software, patented or not, does things that are so complicated as to be difficult for the human mind to comprehend.  But those things, I believe, are still patentable.  Even under Alice, “technical” inventions seems to be safe, including things like a new and different compiler, or new chip technology.

So I am skeptical that the PTO or a court be persuaded by a patent’s argument that its functional language is made patentable merely by being implemented in a computer.  In fact, isn’t this the argument that courts reject every day when they follow the rule that merely claiming a general purpose computer does not confer patent-eligibility?

Still, it is good to be reminded that, as patent drafters, we shoud always be thinking about what may or may not make claims patent-eligible.  And we should always be speaking to those things in our specifications.

And by the way, this post should not be construed as an argument that the ‘651 patent claims would necessarily fall under the Alice test.  I have not concluded that at all.