Claims Should Reflect the Described Computer Improvement to Avoid Patent-Eligibility Rejection

When an invention improves the functioning of a computer it has a better chance of avoiding a section 101 patent eligibility rejection. The USPTO will typically look to the description in the patent application for the details of the improvement. MPEP § 2106.05(a). Yet, not only should the description explain the details of the improvement, but the improvement should be reflected in the claims.

In a patent application by Oracle, the PTAB found the improvement was not reflected in the claims. The application involved techniques for processing graph queries, which may be used in connection with relational database systems.

However, the PTAB found that the claims did not require the improvement of amortizing the initiation of storage operations across entries or a lazy materialization buffer that was discussed in the specification. The PTAB stated, “The addition of an entry in the second data structure, without further limitation, only reflects an idea to specifically amortize retrievals that reduces storage access requests but not a particular solution or a particular way to specifically amortize retrievals that reduces storage access requests.”

Ensuring the described improvement is reflected in the claims will better position a patent application to avoid or overcome a patent eligibility rejection.

[Case: In re HAPRIAN, App. No. 17/162,564 (PTAB)].