PublishedDecember 6, 2018

Increase In § 101 Rejections Due Almost Entirely To Rejected Business Methods

Prof. Colleen Chien, along with her student Jiun-Ying Wu, recently published an analysis of the impact of § 101 on patent prosecution.  While their analysis clarifies which art units are impacted by § 101 decisions like Alice and Mayo, the published article doesn’t clearly answer the question of how each art unit contributes to the overall impact on prosecution from § 101.  Fortunately, thanks to Prof. Chien and Wu’s decision to publish the code used to derive their data from the Google Patents public dataset for BigQuery, it’s easy to answer that question.

And the answer isn’t surprising.  Essentially the entire increase in rejections from § 101 is driven by increased rejections of business method patents.

Tech Centers and Art Units

The USPTO groups its examiners into two main hierarchical divisions.  The first, called “tech centers” or “TCs”, groups examiners into broad technical areas like semiconductors, biotechnology, or mechanical engineering.  (There are 8 tech centers for utility patents, plus a 9th for design patents.) The second, called “art units” or “AUs”, divides each tech center into smaller groupings that handle one or more specific technologies.  The USPTO publishes a list of the classes of technology handled by each art unit.

So, for example, art unit 3711 in tech center 3700 (mechanical engineering) handles toys and gaming devices, particularly those with tangible projectiles, while art unit 3714 handles data processing systems for toys and gaming devices.

§ 101 Rejections By Tech Center

To examine the impact of each technological area on § 101 rejections, we start by extracting the raw number of § 101 non-statutory subject matter rejections issued by each tech center.  Taking these raw numbers, we can graph rejections as a stacked area chart to show how both total rejections under § 101 have changed, and the relative contribution of each tech center to this change.

The Alice decision is clearly visible in the data, occurring shortly after the case was decided in 2014.  However, nearly the entire increase is due to an increase in rejections from business method art units in tech center 3600.  This can be more clearly visualized if we display the same data normalized against the number of § 101 rejections in a given month.[1. This comparison is valid because the number of office actions from each technological area as a percentage of the total number of office actions has held roughly constant since 2011.]

Proportionally, business method rejections go from approximately 20% of all § 101 subject matter rejections to almost 40% post-Alice.

Art Unit Data

There are small increases in other areas.  For example, tech center 3700 (mechanical engineering) sees a meaningful increase in post-Alice rejections.  However, that increase isn’t spread equally across the tech center—as is made clear by the same data showing that non-business method art units in tech center 3600 (which includes business methods, but also includes everything from cars to nuclear power plants to beekeeping) did not experience the same increase as business method units.

So before assuming that the increase in TC3700 is being broadly applied, we can look further into the data to see if any specific art units are seeing a particularly high impact.  

Looking at TC3700, the primary drivers of the increase are art units 3714, 3715, and 3716.  AU3714, as I described above, is about methods for games. AU3715 deals with educational methods.  And AU3716 primarily handles methods used for video games, such as video game matchmaking and similar applications.

In other words, rather than revealing an increase in mechanical engineering rejections, the data actually shows that art units in the mechanical engineering tech center that deal with methods of organizing human activity are where the increase comes from.  And that’s exactly to be expected, given the Supreme Court’s clear statements in Bilski and Alice regarding methods of organizing human activity falling within the scope of an abstract idea.

In short, § 101 isn’t making it hard to get patents—it’s making it hard to get business method patents.  It’s making it hard to get patents on abstract ideas and fundamental economic concepts. And that’s exactly what the Court has held § 101 requires.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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