Page 6 - How to Successfully Obtain Blockchain Patents Brochure

Prong Two is often where patent-eligibility disputes before the USPTO center. For applicants to effectively argue that the claimed invention improves the functioning of a computer system, it is helpful for the specification to both identify a technical problem with prior art systems and a technical solution to that problem. The success of this patent-eligibility argument can rise or fall on what is or is not included with the application as-drafted.
The guidance also identifies claim limitations that were found not to integrate a judicial exception into a practical application, thus rendering the claim patent-ineligible. In one example, the claims were directed to methods for electronically processing paper checks, including receiving merchant transaction data from a merchant, crediting a merchant’s account, and receiving and scanning paper checks after the merchant’s account is credited. This was deemed not to integrate the judicial exception into a practical application, as this did not improve the technical capture of information from a check to create a digital file or the technical step of electronically crediting a bank account. Nor did the claims improve how a check is scanned.
itself. Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. Put another way, an inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional.
By way of example, limitations found to qualify as “significantly more” when recited in a claim with a judicial exception include:
• Improvements to the functioning of a computer, e.g., a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage;
• Improvements to other technology or a technical field;
• Applying the judicial exception with, or by use of, a particular machine;
• Effecting a transformation or reduction of a particular article to a different state or thing;
• Adding a specific limitation other than what is well- understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application, e.g., a non-conventional and non-generic arrangement of various computer components; or
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The following are examples of claim limitations that have been found not to be enough to qualify as “significantly more”:
• Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer;
• Simplyappendingwell-understood,routine,conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry;
Step 2B – Does the Claim Recite an Inventive Concept?
The guidance explains that the second part of the test is a search for an “inventive concept,” which is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception, and is sufficient to ensure that the claim as a whole amounts to “significantly more” than the judicial exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception
How to Successfully Obtain Blockchain Patents
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