The USPTO’s October 17, 2019, patent-eligibility guidance update (and new examples) have received copious attention from law firm commentators and other bloggers. As the PatentlyO blog notes, the USPTO’s guidance doesn’t necessarily follow the case law, but instead “builds a nice straight bridge right over [the] top” of “the swamp” that is § 101 jurisprudence. One of those nice bridges is found in new Example 45, which shows how control software – not an unusual thing to try to patent – can be patent-eligible.
Example 45 is about claims directed to “a controller for an injection molding apparatus.” If this sounds familiar, see Diamond v. Diehr, 450 U.S. 175 (1981). To elucidate, the USPTO provides four example claims:
1. A controller for an injection molding apparatus having a mold defining a cavity for receiving uncured polyurethane that is heated to form a molded article during a cycle of operation of the apparatus, the controller configured to:
(a) repeatedly obtain measurements of the temperature of a mold;
(b) calculate an extent of curing completion of polyurethane in the mold using the obtained temperatures and the Arrhenius equation; and
(c) determine the extent that the polyurethane is cured as a percentage.
2. The controller of claim 1, which is further configured to:
(d) send control signals to the injection molding apparatus once the polyurethane has reached a target percentage, the control signals instructing the apparatus to open the mold and eject the molded polyurethane from the mold.
3. A system comprising the controller of claim 1 connected to a means for temperature measuring that repeatedly measures the temperature of the mold.
4. A controller for an injection molding apparatus having a mold defining a cavity for receiving uncured polyurethane that is heated to form a molded article during a cycle of operation of the apparatus, the controller configured to:
(a) send a control signal to the injection molding apparatus to regulate injection of uncured polyurethane into the mold, and to heat the mold to a target temperature to cure the polyurethane;
(b) repeatedly obtain temperature measurements of the mold;
(c) compare the obtained temperatures to a target temperature; and
(d) maintain temperature of the mold within two degrees of the target temperature by sending a control signal to the apparatus to selectively heat or cool the mold when the obtained temperature of the mold is more than two degrees different than the target temperature.
Now for the instructive part – claim 1, which does not recite a technical or control step but instead analyzes data – is said to be not patent-eligible. Each of claims 2,3, and 4, on the other hand, should be found patent-eligible. The reasoning for each claim can, I think, instructively be boiled down to the following:
- Claim 1 is directed to an abstract idea (determining mathematical relationships) without significantly more because the recited controller simply recites “apply it” with respect to the abstract idea, and making temperature measurements is insignificant post-solution activity.
- Claim 2 is patent-eligible because sending the control signal provides technological advantages, and “control[s] the injection molding apparatus in a particular way . . . and accordingly practically applies the [judicial] exception.”
- Claim 3 is patent-eligible because the recited “means for temperature measuring” is a thermocouple that was not well-known and that provided advantages in combination with the claimed controller.
- Claim 4 is patent-eligible because limitation (d) concerning maintaining the temperature of the mold with respect to a target temperature “employs the information provided by the judicial exception (the comparison of the mold temperature with the target temperature) to control the operation of the injection molding apparatus,” and moreover yields technical advantages. The “claim as a whole” is therefore a technical improvement.
In short, controlling a physical device based on processing data, and/or showing technical advantages in the form of physical benefits to processing data, supports patent-eligibility. Mere processing of data, as examiners often like to remind us, not so much.