Page 7 - Key Insights for Obtaining FinTech Patents Brochure

but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), it will be harder to successfully argue that the claim improves technology.
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. When relying on this basis to show patent-eligibility, it is important to ensure that drafting of the specification and claims takes the technical problem/ technical solution into account.
As one example, a court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific lip-syncing 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, another court 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.
In addition to drafting the specification properly, the claims also must be carefully drafted to reflect the disclosed improvement in technology. Specifically, the guidance states that the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification.
An important consideration in determining whether a claim improves 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 considerations, specifically the particular machine consideration and the mere instructions to apply an exception consideration.
Improvements To Computer Functionality
Under this category, the common issue is whether the claimed invention purports to improve computer capabilities or, instead, invokes computers merely as a tool. In one case, a court considered the patent-eligibility of claims related to a self-referential database and 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. In other words, 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.
7 | www.sheppardmullin.com
Key Insights for Obtaining FinTech Patents
An important consideration in determining whether a claim improves 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.