In the ever-evolving landscape of software patent drafting, one aspect is coming into focus: the need to explicitly disclose and describe in the specification technical problems solved by an invention and how it offers technical solutions. As patent practitioners, we are well aware of the constant scrutiny under Section 101. In this blog post, we delve into the significance of the problem/solution approach and how it can be the key to securing valid claims via a recent PTAB case.
Section 101 of the United States Patent and Trademark Office (USPTO) lays the foundation for patent eligibility. With the rise of software inventions, it has become a formidable hurdle that demands meticulous attention. Crafting patent claims that withstand Section 101 scrutiny starts with a solid technical basis. This also means that likely gone are the days of black box disclosures that avoid any discussion of technical advantages or technical problems.
Historically, many practitioners hesitated to delve deep into the problem-solution paradigm within their specifications. The fear of a narrow interpretation during enforcement deterred them. However, times have changed. With Section 101 as a substantial gatekeeper, any concerns about enforcement have to be balanced against not only finding a way to secure an allowance at the USPTO, but then withstanding a 101 challenge during enforcement.
A recent case from the PTAB illustrates just how important explicit disclosure of a technical problem and solution in the specification has become. The PTAB judges in this case specifically called out the lack of such a discussion in the specification. The case relates to a method and system for providing recommendations based on user geolocation. Appeal 2022-004119, Application 16/137,460. Claim 1 is below:
A method of providing recommendations based on user geolocation, the method comprising:
[S1] obtaining, from a client application installed on a mobile device associated with a user, geolocation information, the geolocation information indicating a geolocation of the user;
[S2] obtaining promotional information associated with one or more merchants at the geolocation of the user, the promotional information including at least one merchant promotional event for a product category;
[S3] obtaining, from the client application, demographic information of the user and preference information of the user, such that the demographic information indicating demographic characteristics of the user and the preference information indicating at least one user specified product category;
[S4] obtaining, from one or more social media platforms associated with the user, social information of the user based the demographic characteristics of the user and the at least one user selected product category, the social information specifying interaction history between the user and the one or more merchants;
[S5] obtaining, from a historical information database, historical user information specifying the one or more merchant promotional events associated with the one or more merchants previously accepted by the user;
[S6] determining, by a recommendation engine, a plurality of promotional events by analyzing the at least one merchant promotional event associated with the one or more merchants at the geolocation of the user and the at least one user selected product category, wherein the plurality of promotional events comprise merchant promotional events the user may likely be interested in;
[S7] determining, by the recommendation engine, a preference indicator for each of the of the4 determined promotional events by applying Bayesian-type statistical analysis to the interaction history between the user and the one or more merchants specified by the social information of the user, and the one or more merchant promotional events previously accepted by the user specified by the historical user information, wherein the preference indicator specifying a likelihood of user satisfaction with each promotional event;
[S8] determining, by the recommendation engine, a value estimate for each determined promotional event based on the determined preference indicator;
[S9] generating, by the recommendation engine, a set of recommendations comprising the individual promotional events having the determined value estimate over a specified threshold;
[S10] ordering, by the recommendation engine, the individual promotional events within the set of recommendations, such that each promotional event is ordered based on the determined value estimate, wherein promotional events with a higher value estimate are ordered before the promotional events with a lower value estimate;
[S11] presenting, by the recommendation engine, the ordered individual promotional events of the set of recommendations in a graphical interface of the client application; and
[S12] tracking, by the recommendation engine, acceptance of the individual promotional events for the one or more merchant.
The application was rejected under 101, among other sections, and the applicant appealed to the board. On Appeal, the applicant argued against the 101 rejection as follows:
… the claims set forth a specific technical problem for which the pending claims recite a specific technical solution. In particular, the claims set forth the functionality of an improved user specific, geolocation-based, promotional event distribution system that is different from other solutions, at least because the claims (for example) specify determining a preference indicator which specifies a likelihood of user satisfaction with each promotional event.
The PTAB was not convinced and specifically noted the lack of discussion of a technical problem in the specification:
We are not persuaded because Appellant offers no evidence that the claims provide a technical solution to a technical problem. See Appeal Br. 11–12. For example, Appellant does not identify any portion of the Specification that discusses technical problems and technical solutions. See id.; and see Spec. generally. Instead, we find the problem discussed in the Specification (providing consumers only relevant promotional advertisements (Spec. ¶ 4)) is an advertising, marketing, sales, and business problem, not a technical or technology problem. We are not persuaded for the additional reason that, contrary to Appellant’s contentions, the claims do not set forth a specific technical problem.
As the case make clear, merely asserting a technical problem during prosecution is not enough. Without a detailed description, in the patent specification, of the technical solution offered by the invention, it is easy for the PTAB to summarily reject explanations after the fact.
There are various ways to address problems and solutions in the specification. For example, the specification can showcase how the various elements of the claims work together to address technical issues and achieve technical benefits. Further, disclosure with step-by-step reasoning and logic can be provided showing the causation from claimed actions to technical results. This helps illustrate how an innovation is more than just an abstract concept but a real, technical advancement, and how the specific claimed elements actually achieve a technical benefit.. Such disclosure can also come in handy when addressing obviousness rejections. In fact, weaving together a coherent problem-solution story that illustrates a real world benefit, along with elements distinguishing the prior art, can present a convincing package to provide the examiner with solid support to justify issuing an allowance.
So, if there is a concern 101 may be a block (or substantial defense asserted by an infringer) make sure to understand the technical aspects of the invention and describe them in the specification. Specific causation from claimed elements to technical benefits, in the context of a technical problem, can be key. And, do not confuse business problems with technical ones. As patent practitioners navigating the intricate world of software inventions and Section 101 challenges, the concept of technical problem-solving and detailed technical solutions should be distinguished from other problems that the USPTO often discards as too abstract. Focusing on the technical aspects from the outset can significantly enhance the chances of patent grant and, ultimately, the success of the applicant's IP strategy.