Defanging Descriptive Material Rejections

Non-functional descriptive material is a throwback to an earlier time. Historically, the non-functional descriptive matter doctrine was used by examiners to argue that limitations related to the content of information should be given little to no patentable weight. However, current subject matter eligibility jurisprudence provides tools to simply treat content-based inventions as ineligible (e.g., Electric Power Group, LLC v. Alstom S.A.), and so it is not clear that non-functional descriptive material rejections should continue to play a role in examination. Nevertheless, the doctrine still exists, and so this article presents three examples illustrating how you can respond to non-functional descriptive material rejections when they arise in your practice.

Example 1: Using the Master’s Tools

The poet Audre Lorde wrote “the master’s tools will never dismantle the master’s house.” While this may be true in some contexts, as shown by the prosecution of application 14/128,511 for a data capture and routing system and method, it clearly does not apply to non-functional descriptive material rejections. On January 21, 2020, the patent office rejected that case, and, rather than showing that the cited art covered various routing rules included in a routing rules database, discounted those rules as being merely printed matter. Office Action of January 21, 2020 on 14/128,511 at 5 (“note that the cited rules are never used and therefore considered printed matter”). In response, the applicant relied on the “master’s tools” in the form of the MPEP, citing MPEP 2111.05(III) to distinguish between limitations which “perform[] some function with respect to the computer with which it is associated,” and limitations “directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data.” Response of April 20, 2020 on 14/128,511 at 8. The applicant then argued that recited routing rules fell into the former category, and therefore could not properly be dismissed when comparing the invention to the cited art. These arguments were successful, and the application was allowed on the next action (Notice of Allowance of June 1, 2020 on 14/128,511), and was ultimately issued as U.S. patent 10,776,454 on September 15, 2020.

Example 2: Deploying DiStefano

Of course, the MPEP is not the only tool available to applicants whose limitations are treated as non-functional descriptive material. An alternative approach was used in prosecution of 15/004,531 for an Online Product Reservation System. On April 10, 2019, the patent office rejected that application, noting that

the limitation “performance attribute” is given little patentable weight. The type of data (i.e. type of data) does not change or alter the function of the system and is considered to be non-functional descriptive material that does not distinguish the claimed invention from the prior art in terms of patentability. (In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed Cir. 1983) MPEP 2106).

Office Action of April 10, 2019 on 15/004,531 at 11-12.

The applicant then made the following argument, distinguishing In re Gulack, and citing the case of In re DiStefano to argue that the patent office’s treatment was improper because it had not made even a preliminary showing that the “performance attribute” was, in fact, printed matter.

The Examiner also alleges that the term “performance attribute” is given little patentable weight. (Action, at pp. 11-12). Applicant disagrees. As an initial matter, the In re Gulack case cited by the Office (Action p. 12) dealt with the relationship between printed matter and a substrate. However, the present application differs from Gulack, and further the Office has not made a determination that the limitation in question is in fact directed toward printed matter. See MPEP 2111.05; In re DiStefano, 808 F.3d 845, 117 USPQ2d 1267-1268 (Fed. Cir. 2015).

Response of August 12, 2019 on 15/004,531 at 12.

The application was then allowed (Notice of Allowance of December 13, 2019 on 15/004,531), and issued as U.S. patent 10,641,644 on April 14, 2020.

Example 3: Fighting on Functionality

Even without fighting on the threshold issue of whether a limitation constitutes printed matter, it is possible to overcome non-functional descriptive material limitations by arguing that the relevant material is not, in fact, non-functional. This was the approach that was successfully taken during prosecution of 16/109,394 for a Tool for Identifying Occurrence of Acute Incident Symptomatic of Mental Condition or Disorder. On August 11, 2020, the patent office rejected that application, arguing that a recitation of “indication that the user is hearing sounds” was non-functional descriptive material because “there is no evidence that hearing of sounds affects the process of indicating by an overt activation action.” Office Action of August 11, 2020 on 16/109,394 at 14. In response, the applicant turned back to guidance issued by the patent office in the mid-1990s to argue that the particular nature of an input provided to trigger an activation action was functional:

The Office Action’s position is wrong because it is directly contrary to the Patent Office’s own guidance on this issue. On February 28, 1996, the Patent Office issued “Examination Guidelines for Computer-Related Inventions” (the “Guidelines”) (available at https://www.uspto. gov/web/offices/com/sol/og/con/files/cons093.htm). These guidelines indicate how Examiners should distinguish between functional and non-functional material. Among the examples provided is that of a “computer that recognizes a particular grouping of musical notes read from memory and upon recognizing that particular sequence, causes another defined series of notes to be played.” Guidelines, p. 11. The Guidelines state that example “defines a functional interrelationship among that data and the computing processes performed when utilizing the data.” Id.

The present claims to a specific activation action are no different from this example. In the example, a computer takes action on recognizing “a particular grouping of musical notes,” not just any grouping of musical notes. Thus, the particular nature of the input is functional. Here, the claimed actions are taken not in response to any activation action, but in response to the specifically claimed activation action indicating that the user is hearing sounds. Just as in the Guideline’s example, the computer is recited as taking action in response to a particular input (rather than any generic input). Thus, the particular activation action claimed here is functional and cannot be disregarded by the Patent Office.

Response of January 11, 2021 on 16/109,394 at 10-11.

Unlike the other applications mentioned in this article, this application has not been allowed due to some separate rejections which are currently under appeal. However, the art-based rejections were withdrawn after the above argument was presented (Office Action of June 24, 2021 on 16/109,394 at 7), and so it appears that arguing functionality can be an effective way of responding to non-functional descriptive material rejections, even though it did not result in application 16/109,394 being allowed.

Be Well-Prepared

For many applications, non-functional descriptive material rejections are more than a historical relic. However, it is undeniable that they do have a long history, and that history has given rise to many arguments that can be used to respond when faced with this type of rejection. From the MPEP, to caselaw such as DiStefano, to the patent office’s own guidance materials, a well-prepared applicant can use these and other arguments that have been deployed over the years to confidently address non-functional descriptive material rejections if and as they arise.

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