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`Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations
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`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Part 42
`
`[Docket No. PTO–P–2011–0087]
`
`RIN 0651–AC75
`
`Transitional Program for Covered
`Business Method Patents—Definitions
`of Covered Business Method Patent
`and Technological Invention
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Final rule.
`
`SUMMARY: The United States Patent and
`Trademark Office (Office or USPTO) is
`revising the rules of practice to
`implement the provision of the Leahy-
`Smith America Invents Act (‘‘AIA’’) that
`requires the Office to issue regulations
`for determining whether a patent is for
`a technological invention in a
`transitional post-grant review
`proceeding for covered business method
`patents. The provision of the AIA will
`take effect on September 16, 2012, one
`year after the date of enactment. The
`AIA provides that this provision and
`any regulations issued under the
`provision will be repealed on September
`16, 2020, with respect to any new
`petitions under the transitional
`program.
`DATES: Effective Date: The changes in
`this final rule take effect on September
`16, 2012.
`Applicability Date: The changes in
`this final rule apply to any covered
`business method patent issued before,
`on, or after September 16, 2012.
`FOR FURTHER INFORMATION CONTACT:
`Sally C. Medley, Administrative Patent
`Judge; Michael P. Tierney, Lead
`Administrative Patent Judge; Robert A.
`Clarke, Administrative Patent Judge;
`and Joni Y. Chang, Administrative
`Patent Judge; Board of Patent Appeals
`and Interferences, by telephone at (571)
`272–9797.
`SUPPLEMENTARY INFORMATION:
`Executive Summary: Purpose: On
`September 16, 2011, the AIA was
`enacted into law (Pub. L. 112–29, 125
`Stat. 284 (2011)). The purpose of the
`AIA and this final rule is to establish a
`more efficient and streamlined patent
`system that will improve patent quality
`and limit unnecessary and
`counterproductive litigation costs. The
`preamble of this notice sets forth in
`detail the definitions of the terms
`‘‘covered business method patent’’ and
`‘‘technological invention’’ that the
`Board will use in conducting
`
`transitional covered business method
`patent review proceedings. The USPTO
`is engaged in a transparent process to
`create a timely, cost-effective alternative
`to litigation. Moreover, this rulemaking
`process is designed to ensure the
`integrity of the trial procedures. See 35
`U.S.C. 326(b).
`Summary of Major Provisions: This
`final rule sets forth the definitions of the
`terms ‘‘covered business method
`patent’’ and ‘‘technological invention’’
`that the Office will use in conducting
`transitional covered business method
`patent review proceedings.
`Costs and Benefits: This rulemaking is
`not economically significant, but is
`significant, under Executive Order
`12866 (Sept. 30, 1993), as amended by
`Executive Order 13258 (Feb. 26, 2002)
`and Executive Order 13422 (Jan. 18,
`2007).
`Background: To implement sections 6
`and 18 of the AIA, the Office published
`the following notices of proposed
`rulemaking: (1) Rules of Practice for
`Trials before the Patent Trial and
`Appeal Board and Judicial Review of
`Patent Trial and Appeal Board
`Decisions, 77 FR 6879 (Feb. 9, 2012), to
`provide a consolidated set of rules
`relating to Board trial practice for inter
`partes review, post-grant review,
`derivation proceedings, and the
`transitional program for covered
`business method patents, and judicial
`review of Board decisions by adding
`new parts 42 and 90 including a new
`subpart A to title 37 of the Code of
`Federal Regulations (RIN 0651–AC70);
`(2) Changes to Implement Inter Partes
`Review Proceedings, 77 FR 7041 (Feb.
`10, 2012), to provide rules specific to
`inter partes review by adding a new
`subpart B to 37 CFR part 42 (RIN 0651–
`AC71); (3) Changes to Implement Post-
`Grant Review Proceedings, 77 FR 7060
`(Feb. 10, 2012), to provide rules specific
`to post-grant review by adding a new
`subpart C to 37 CFR part 42 (RIN 0651–
`AC72); (4) Changes to Implement
`Transitional Program for Covered
`Business Method Patents, 77 FR 7080
`(Feb. 10, 2012), to provide rules specific
`to the transitional program for covered
`business method patents by adding a
`new subpart D to 37 CFR part 42 (RIN
`0651–AC73); (5) Transitional Program
`for Covered Business Method Patents—
`Definition of Technological Invention,
`77 FR 7095 (Feb. 10, 2012), to add a new
`rule that sets forth the definition of
`technological invention for determining
`whether a patent is for a technological
`invention for purposes of the
`transitional program for covered
`business method patents (RIN 0651–
`AC75); and (6) Changes to Implement
`Derivation Proceedings, 77 FR 7028
`
`(Feb. 10, 2012), to provide rules specific
`to derivation proceedings by adding a
`new subpart E to 37 CFR part 42 (RIN
`0651–AC74).
`Additionally, the Office published a
`Patent Trial Practice Guide for the
`proposed rules in the Federal Register
`to provide the public an opportunity to
`comment. Practice Guide for Proposed
`Trial Rules, 77 FR 6868 (Feb. 9, 2012)
`(Request for Comments) (hereafter
`‘‘Practice Guide’’ or ‘‘Office Patent Trial
`Practice Guide’’). The Office envisions
`publishing a revised Patent Trial
`Practice Guide for the final rules. The
`Office also hosted a series of public
`educational roadshows, across the
`country, regarding the proposed rules
`for the implementation of the AIA.
`In response to the notices of proposed
`rulemaking and the Practice Guide
`notice, the Office received 251
`submissions offering written comments
`from intellectual property organizations,
`businesses, law firms, patent
`practitioners, and others, including a
`United Stated senator who was a
`principal author of section 18 of the
`AIA. The comments provided support
`for, opposition to, and diverse
`recommendations on the proposed
`rules. The Office appreciates the
`thoughtful comments, and has
`considered and analyzed the comments
`thoroughly. The Office’s responses to
`the comments are provided in the 124
`separate responses based on the topics
`raised in the 251 comments in the
`Response to Comments section infra.
`Section 18 of the AIA provides that
`the Director may institute a transitional
`proceeding only for a patent that is a
`covered business method patent. In
`particular, section 18(d)(1) of the AIA
`specifies that a covered business
`method patent is a patent that claims a
`method or corresponding apparatus for
`performing data processing or other
`operations used in the practice,
`administration, or management of a
`financial product or service, except that
`the term does not include patents for
`technological inventions. Section
`18(d)(2) of the AIA provides that the
`Director will issue regulations for
`determining whether a patent is for a
`technological invention. Consistent with
`these statutory provisions, this
`rulemaking provides regulations for
`determining whether a patent is for a
`technological invention. The AIA
`provides that the transitional program
`for the review of covered business
`method patents will take effect on
`September 16, 2012, one year after the
`date of enactment, and applies to any
`covered business method patent issued
`before, on, or after September 16, 2012.
`Section 18 of the AIA and the
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`48735
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`regulations issued under this provision
`will be repealed on September 16, 2020.
`Section 18 of the AIA and the
`regulations issued will continue to
`apply after September 16, 2020, to any
`petition for a transitional proceeding
`that is filed before September 16, 2020.
`Pursuant to section 18(d) of the AIA,
`the Office is prescribing regulations to
`set forth the definitions of the terms
`‘‘covered business method patent’’ and
`‘‘technological invention’’ in its
`regulation. In February 2012, the Office
`published two notices proposing
`changes to 37 CFR chapter I to
`implement sections 18(d)(1) and (d)(2)
`of the AIA. See Changes to Implement
`Transitional Program for Covered
`Business Method Patents, 77 FR 7080
`(Feb. 10, 2012) and Transitional
`Program for Covered Business Method
`Patents—Definition of Technological
`Invention, 77 FR 7095 (Feb. 10, 2012).
`This final rule revises the rules of
`practice to implement section 18(d)(1)
`of the AIA that provides the definition
`of the term ‘‘covered business method
`patent’’ and section 18(d)(2) of the AIA
`that provides that the Director will issue
`regulations for determining whether a
`patent is for a technological invention.
`This final rule sets forth the definitions
`in new subpart D of 37 CFR 42,
`specifically in § 42.301.
`This rulemaking is one of a series of
`rules that the Office is promulgating
`directed to the new trials that were
`created by the AIA. The Office, in a
`separate rulemaking, revises the rules of
`practice to provide a consolidated set of
`rules relating to Board trial practice,
`adding part 42, including subpart A
`(RIN 0651–AC70). More specifically,
`subpart A of part 42 sets forth the
`policies, practices, and definitions
`common to all trial proceedings before
`the Board. In another separate
`rulemaking, the Office revises the rules
`of practice to implement the provisions
`of the AIA for the transitional program
`for covered business method patents
`(RIN 0651–AC71). In particular, that
`separate final rule adds a new subpart
`D to 37 CFR part 42 to provide rules
`specific to transitional post-grant review
`of covered business method patents.
`Further, that separate final rule adds a
`new subpart B to 37 CFR part 42 to
`provide rules specific to inter partes
`review, and a new subpart C to 37 CFR
`part 42 to provide rules specific to post-
`grant review. The notices are available
`on the USPTO Internet Web site at
`www.uspto.gov.
`Discussion of Specific Rules
`Title 37 of the Code of Federal
`Regulations, Chapter I, Part 42, Subpart
`
`D, Section 42.301, entitled ‘‘Definitions’’
`is added as follows:
`Section 42.301: Section 42.301
`provides definitions specific to covered
`business method patent reviews.
`Section 42.301(a) adopts the
`definition for covered business method
`patents provided in section 18(d)(1) of
`the AIA. Specifically, the definition
`provides that a covered business method
`patent means a patent that claims a
`method or corresponding apparatus for
`performing data processing or other
`operations used in the practice,
`administration, or management of a
`financial product or service, except that
`the term does not include patents for
`technological inventions.
`Section 42.301(b) sets forth the
`definition for technological invention
`for covered business method patent
`review proceedings. The definition of
`technological invention provides that in
`determining whether a patent is for a
`technological invention solely for
`purposes of the Transitional Program for
`Covered Business Methods, the
`following will be considered on a case-
`by-case basis: Whether the claimed
`subject matter as a whole recites a
`technological feature that is novel and
`unobvious over the prior art, and solves
`a technical problem using a technical
`solution. The Office recognizes that, in
`prescribing a regulation to define
`technological invention, the Office must
`consider the efficient administration of
`the proceedings by the Office, and its
`ability to complete them timely,
`consistent with 35 U.S.C. 326(b).
`The definition is consistent with the
`legislative history of the AIA. See, e.g.,
`157 Cong. Rec. S1364 (daily ed. Mar. 8,
`2011) (statement of Sen. Schumer)
`(‘‘The ‘patents for technological
`inventions’ exception only excludes
`those patents whose novelty turns on a
`technological innovation over the prior
`art and are concerned with a technical
`problem which is solved with a
`technical solution and which requires
`the claims to state the technical features
`which the inventor desires to protect.’’);
`157 Cong. Rec. H4497 (daily ed. June 23,
`2011) (statement of Rep. Smith)
`(‘‘Patents for technological inventions
`are those patents whose novelty turns
`on a technological innovation over the
`prior art and are concerned with a
`technical problem which is solved with
`a technical solution.’’); 157 Cong. Rec.
`S5428 (daily ed. Sept. 8, 2011)
`(statement of Sen. Coburn) (‘‘Patents for
`technological inventions are those
`patents whose novelty turns on a
`technological innovation over the prior
`art and are concerned with a technical
`problem which is solved with a
`technical solution.’’).
`
`Response to Comments
`The Office received about 47 written
`submissions of comments (from
`intellectual property organizations,
`businesses, law firms, patent
`practitioners, and others) in response to
`the proposed definitions. The Office
`appreciates the thoughtful comments,
`and has considered and analyzed the
`comments thoroughly. The Office’s
`responses to the comments that are
`germane to the definitions adopted in
`this final rule are provided below:
`Section 42.301(a)
`Comment 1: Several comments
`suggested that the Office interpret
`‘‘financial product or service’’ broadly.
`Response: The definition set forth in
`§ 42.301(a) for covered business method
`patent adopts the definition for covered
`business method patent provided in
`section 18(d)(1) of the AIA. In
`administering the program, the Office
`will consider the legislative intent and
`history behind the public law definition
`and the transitional program itself. For
`example, the legislative history explains
`that the definition of covered business
`method patent was drafted to
`encompass patents ‘‘claiming activities
`that are financial in nature, incidental to
`a financial activity or complementary to
`a financial activity.’’ 157 Cong. Rec.
`S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer). This
`remark tends to support the notion that
`‘‘financial product or service’’ should be
`interpreted broadly.
`Comment 2: One comment noted that
`there is no proposed definition of the
`term ‘‘financial product or service’’ and
`suggested amending the proposed rule
`for covered business method patent to
`include two factors to consider on a
`case-by-case basis: (1) Whether the
`claimed subject matter is directed to an
`agreement between two parties
`stipulating the movement of money or
`other consideration now or in the
`future; and (2) whether the claimed
`subject matter is particular to the
`characteristics of financial institutions.
`Still other comments supported the
`Office’s definition of a covered business
`method patent as is.
`Response: The definition suggested by
`the comment for ‘‘financial product or
`service’’ is not adopted. That suggestion
`would appear to limit the scope of the
`definition of covered business method
`patents provided in section 18(d)(1) of
`the AIA, particularly the second prong
`of the proposed definition. In addition,
`the Office has considered the comment
`seeking to change the definition of a
`covered business method patent against
`the comments in support of the
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`definition set forth in the proposed
`§ 42.301(a) and in section 18(d)(1) of the
`AIA. Upon consideration of the
`diverging comments, and the definition
`provided in the public law, the Office
`adopts proposed § 42.301(a), in this
`final rule, without any alterations.
`Comment 3: One comment suggested
`that the Office should clarify that the
`term ‘‘financial product or service’’
`should be limited to the products or
`services of the financial services
`industry. Still another comment stated
`that the term ‘‘financial product or
`service’’ is not limited to the products
`of the financial services industry.
`Response: The suggestion to clarify
`that the term ‘‘financial product or
`service’’ is limited to the products or
`services of the financial services
`industry is not adopted. Such a narrow
`construction of the term would limit the
`scope of the definition of covered
`business method patents beyond the
`intent of section 18(d)(1) of the AIA. For
`example, the legislative history reveals
`that ‘‘[t]he plain meaning of ‘financial
`product or service’ demonstrates that
`section 18 is not limited to the financial
`services industry.’’ 157 Cong. Rec.
`S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer). This
`remark tends to support the notion that
`‘‘financial product or service’’ is not
`limited to the products or services of the
`financial services industry.
`Comment 4: One comment suggested
`that the Office revise proposed
`§ 42.301(a) to clarify that the
`determination of a ‘‘covered business
`method patent’’ would not be satisfied
`by merely reciting an operating
`environment related to data processing
`or management of a financial product or
`service, but that eligibility should be
`determined by what the patent claims.
`Response: This suggestion is not
`adopted. The definition set forth in
`§ 42.301(a) adopts the definition for a
`covered business method patent
`provided in section 18(d)(1) of the AIA.
`Specifically, the statutory language
`states that a covered business method
`patent is ‘‘a patent that claims a method
`or corresponding apparatus for
`performing data processing * * *,
`except that the term does not include
`patents for technological inventions.’’
`(Emphasis added.) Consistent with the
`AIA, the definition set forth in
`§ 42.301(a), as adopted in this final rule,
`is based on what the patent claims.
`Comment 5: One comment suggested
`that the proposed definition is based on
`Class 705 of the United States
`Classification System and that the
`definition should be amended to
`include a specific reference to Class 705,
`including systems.
`
`Response: The definition set forth in
`§ 42.301(a) adopts the definition for
`covered business method patents
`provided in section 18(d)(1) of the AIA.
`The definition set forth in § 42.301(a)
`will not be altered to make reference to
`Class 705 of the United Classification
`System since doing so would be
`contrary to the definition set out in the
`public law. The legislative history
`reveals that
`[o]riginally, class 705 was used as the
`template for the definition of business
`method patents in section 18. However, after
`the bill passed the Senate, it became clear
`that some offending business method patents
`are issued in other sections. So the House bill
`changes the definition only slightly so that it
`does not directly track the class 705
`language.
`157 Cong. Rec. S5410 (daily ed. Sept. 8,
`2011) (statement of Sen. Schumer). This
`remark tends to support the notion that
`the definition of a covered business
`method patent should not be changed to
`refer to Class 705 of the United States
`Classification System. In addition, the
`Office received comments in support of
`the definition set forth in the proposed
`rule. Upon considering the AIA and
`legislative history, as well as those
`supporting comments in favor of the
`definition against the comment to
`change the definition, the Office has
`decided to adopt proposed § 42.301(a)
`in this final rule, without altering the
`proposed definition.
`Section 42.301(b)
`Comment 6: One comment asked
`whether it is the novel and unobvious
`technological feature that provides the
`technical solution to a technical
`problem or that the novel and
`unobvious technological feature does
`not necessarily need to be the technical
`solution to the technical problem.
`Response: The definition in
`§ 42.301(b) includes considering
`whether the claimed subject matter as a
`whole recites a technological feature
`that is novel and unobvious over the
`prior art and solves a technical problem
`using a technical solution. The reference
`‘‘and solves a technical problem using a
`technical solution’’ is with respect to
`‘‘the claimed subject matter as a whole.’’
`Comment 7: One comment suggested
`that the definition is not actually a
`definition as it only states two factors to
`be considered, and that the Office did
`not have to use legislative history for the
`rule because Congress instructed the
`Office to use its own expertise. Still
`another comment suggested that the
`Office should not have based the
`definition on the legislative history.
`Response: Section 18(d)(2) of the AIA
`provides that ‘‘[t]o assist in
`
`implementing the transitional
`proceeding authorized by this
`subsection, the Director shall issue
`regulations for determining whether a
`patent is for a technological invention.’’
`Consistent with the AIA, the definition
`for technological invention, as adopted
`in this final rule, sets forth what is to
`be considered in determining whether a
`patent is for a technological invention.
`The Office disagrees that it should not
`have looked to the legislative history in
`formulating the definition. The Office,
`in determining the best approach for
`defining the term ‘‘technological
`invention,’’ concluded that the relied
`upon portion of the legislative history
`represented the best policy choice.
`Comment 8: Several comments sought
`clarification on whether a single claim
`can make the patent a covered business
`method patent or whether it is the
`subject matter as a whole that is
`considered.
`Response: The definition set forth in
`§ 42.301(b) for a covered business
`method patent adopts the definition for
`covered business method patents
`provided in section 18(d)(1) of the AIA.
`Specifically, the language states that a
`covered business method patent is ‘‘a
`patent that claims a method or
`corresponding apparatus for performing
`data processing * * *, except that the
`term does not include patents for
`technological inventions.’’ (Emphasis
`added.) Consistent with the AIA, the
`definition, as adopted, therefore is based
`on what the patent claims.
`Determination of whether a patent is a
`covered business method patent will be
`made based on the claims. Similarly,
`determination of whether a patent is to
`a technological invention will be
`determined based on the claims of the
`patent. A patent having one or more
`claims directed to a covered business
`method is a covered business method
`patent for purposes of the review, even
`if the patent includes additional claims.
`Comment 9: Several comments
`suggested that the definition should not
`be based on novelty or nonobviousness;
`some proposed a definition that
`eliminates ‘‘novel and unobvious.’’
`Other comments fully supported the
`proposed definition set forth in the
`proposed rule.
`Response: Under § 42.301(b), in
`determining whether a patent is for a
`technological invention solely for
`purposes of the Transitional Program for
`Covered Business Methods, the Office
`will consider whether the claimed
`subject matter as a whole recites a
`technological feature that is novel and
`unobvious over the prior art. Therefore,
`the definition in § 42.301(b) is
`consistent with the AIA and the
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`48737
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`legislative history. Moreover, several
`comments supported the definition set
`forth in proposed § 42.301(b). Upon
`considering the AIA and the legislative
`history as well as the supporting
`comments in favor of the definition
`balanced against the comments to
`change the definition, the Office adopts
`the definition in proposed § 42.301(b),
`in this final rule, without alterations.
`Therefore, the Office did not adopt a
`definition that is not based on novelty
`or nonobviousness.
`Comment 10: Several comments
`proposed using the standards of patent
`subject matter eligibility under 35
`U.S.C. 101 to define whether a patent is
`for a technological invention. Still other
`comments opposed using a 35 U.S.C.
`101 standard. Moreover, several
`comments fully supported the definition
`in proposed § 42.301(b).
`Response: The definition in proposed
`§ 42.301(b) is consistent with the AIA
`and the legislative history as discussed
`above. The suggestions to change the
`definition using the standards of patent
`subject matter eligibility under 35
`U.S.C. 101 will not be adopted. Several
`comments supported the definition set
`forth in proposed § 42.301(b) while
`other comments opposed changing the
`definition based on the standards of
`patent subject matter eligibility under
`35 U.S.C. 101. Upon considering the
`AIA and the legislative history as well
`as the comments in favor of the
`definition balanced against the
`comments to change the definition, the
`Office decided to adopt proposed
`§ 42.301(b), in this final rule.
`Comment 11: Several comments
`suggested applying the definition to
`limit reviews under the program while
`others suggested applying the definition
`not to limit reviews under the program.
`Response: The Office will consider
`whether a patent is for a technological
`invention on a case-by-case basis and
`will take into consideration the facts of
`a particular case. Therefore, the Office
`did not adopt the suggestions to apply
`a definition to limit, or not to limit,
`reviews without considering the factors
`as applied to all of the reviews.
`Comment 12: Several comments
`stated that the definition in proposed
`§ 42.301(b) is confusing, circular, and
`ambiguous. Other comments fully
`supported the definition set forth in the
`proposed rule.
`Response: The definition adopted in
`§ 42.301(b) is based upon the legislative
`history of the AIA. The Office believes
`that the definition provides appropriate
`guidance to the public, taken in light of
`the legislative history, as well as the
`Supreme Court case law on patent
`eligible subject matter and the Office’s
`
`existing guidelines. See, e.g., Interim
`Guidance for Determining Subject
`Matter Eligibility for Process Claims in
`View of Bilski v. Kappos, 75 FR 43922
`(Jul. 27, 2010). The Office will consider
`whether a patent is for a technological
`invention on a case-by-case basis and
`will take into consideration the facts of
`a particular case. As applied to a
`particular case, only one result will
`occur. Moreover, additional guidance
`will be provided to the public as
`decisions are rendered applying the
`definition as they become available.
`Many comments fully supported the
`definition. Upon considering the AIA
`and the legislative history as well as the
`supporting comments in favor of the
`definition balanced against the
`comments to change the definition, the
`Office decided to adopt proposed
`§ 42.301(b) in this final rule, and not to
`alter the definition as requested.
`Comment 13: Several comments
`proposed various different definitions
`for technological invention. Other
`comments fully supported the definition
`set forth in the proposed rule.
`Response: The Office appreciates and
`has considered the suggested
`definitions. Although the definitions
`have been considered, the Office is not
`adopting the definitions suggested in
`the comments. Specifically, the Office
`believes that the definition in
`§ 42.301(b) is consistent with the
`legislative history of the AIA and more
`narrowly tailors the reviews that are
`instituted in view of that history.
`Moreover, several comments supported
`the definition set forth in the proposed
`rule. Upon considering the comments in
`favor of the definition balanced against
`those comments to change the
`definition, the Office has decided to
`adopt proposed § 42.301(b), in this final
`rule, and not alter the definition as
`requested.
`Comment 14: One comment
`supported the definition set forth in
`proposed § 42.301(b), but encouraged
`the Office to include in the preamble of
`the final rule notice a reference to
`remarks made by Senator Durbin from
`the legislative history. One other
`comment suggested that the remarks of
`Senators Schumer and Coburn and
`Representative Smith should not be
`given controlling weight and in any
`event their remarks should be balanced
`against the remarks of others, including
`Senator Durbin. Both comments refer to
`the remarks made by Senator Durbin on
`September 8, 2011. 157 Cong. Rec.
`S5433 (daily ed. Sept. 8, 2011).
`Response: The Office appreciates the
`comments. However, the specific
`remarks of Senator Durbin to which the
`Office is directed will not be included
`
`in the preamble as suggested. In the
`testimony to which the Office is
`directed, Senator Durbin provided broad
`examples of the kinds of patents that
`would not be subject to a transitional
`covered business method patent review.
`Although the comments are instructive,
`the comments identify very specific
`examples that are not necessarily suited
`for the preamble but are better
`addressed when reviewing the merits of
`a case.
`Comment 15: Several comments
`suggested that the case-by-case
`approach is not specific enough and
`could create uncertainty. Other
`comments fully supported the definition
`set forth in proposed § 42.301(b).
`Response: The definition in proposed
`§ 42.301(b) was drafted to ensure
`flexibility in administering the
`transitional covered business method
`review program. In determining whether
`a patent is for a technological invention,
`the particular facts of a case will be
`considered. Additionally, more
`information on how the rule applies to
`specific factual situations will be
`available as decisions are issued.
`Therefore, the Office adopts proposed
`§ 42.301(b) in this final rule without any
`alteration.
`Office Patent Trial Practice Guide
`Comment 16: Several comments
`suggested that the Office provide
`additional examples for what is a
`covered business method patent and
`what is a technological invention.
`Response: The Office agrees that more
`examples would be helpful to the
`public. The Office anticipates
`publishing written decisions as soon as
`practical, after which more examples
`likely will be provided in the Office
`Patent Trial Practice Guide. The Office
`will make cases publicly available to
`provide more guidance in the future.
`Comment 17: One comment stated
`that the provided examples in the
`Practice Guide for Proposed Trial Rules
`are inconsistent because a hedging
`machine and credit card reader are
`computers using known technologies.
`Response: The Office disagrees that
`the examples of covered business
`method patents that are subject to a
`covered business method patent review
`are inconsistent with the examples of
`patents that claim a technological
`invention. The Practice Guide for
`Proposed Trial Rules provides examples
`of covered business method patents that
`are subject to a covered business
`method patent review. One example is
`a patent that claims a method for
`hedging risk in the field of commodities
`trading. Another example is a patent
`that claims a method for verifying
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`validity of a credit card transaction. Still
`other examples are given of a patent that
`claims a technological invention that
`would not be subject to a covered
`business method patent review. One
`example is a patent that claims a novel
`and nonobvious hedging machine for
`hedging risk in the field of commodities
`trading. Another example is a patent
`that claims a novel and nonobvious
`credit card reader for verifying the
`validity of a credit card transaction. The
`comment assumes that in all examples
`the machine or card reader is a
`computer using known technologies.
`However, no such qualifications were
`provided in the examples.
`Rulemaking Considerations
`The rulemaking considerations for the
`series of final rules implementing the
`administrative patent trials as required
`by the AIA have been considered
`together and are based upon the same
`assumptions, except where differences
`between the regulations and
`proceedings that they implement