As for the eligibility of the subject matter, both the China National Intellectual Property Administration (CNIPA) and the United States Patent and Trademark Office (USPTO) have detailed regulations, and the regulations are increasingly converging. However, in practice, there are significant differences in the determination of the eligibility of the subject matter by examiners in the two countries. For instance, a Chinese patent application, when reviewed in China, might be deemed eligible subject matter by CNIPA, but upon entering the United States, the USPTO may classify it as non-statutory subject matter. This necessitates that agents adjust the writing mode and response strategy in a timely manner to cope with different examination standards. Whether the claimed invention is directed to a statutory subject matter is difficult to response other than novelty, inventiveness, and practical applicability, which puts higher requirements on the professional quality of the agent. The European and American Department of IPRTOP, frequently dealing with US patent applications, has accumulated substantial experience with USPTO's examination processes. Our agents are well-versed in the USPTO's evaluative approach and have distilled several effective strategies for addressing subject matter eligibility, drawing from numerous successful response cases.

It is important to note that any structure mentioned in the specification, whether it is a detailed description or a brief mention, can serve as a potential solution for overcoming the eligibility problem. In a certain case involving a four-dimensional imaging method, the original claim 1 stated: “Using a probability statistical modeling method to describe an uncertainty distribution of amplitude under the influence of time-varying factors, filtering based on a continuous complex wavelet transform, and using invariant signals for four-dimensional imaging when fusing each channel”.

The US examiner posited that the above claim involves mathematical relationships, and emphasized that “imaging” as an activity is unrelated to invention points and lacks practical applicability. Consequently, the claim was deemed outside the scope of statutory subject matter and ineligible for patent authorization. Overturning the examiner's stance on non-statutory subject matter typically presents a formidable challenge. However, fortunately, this invention had a corresponding priority document in China, and our agent clearly recorded specific application scenarios and related structures in the specification when handling the priority case. Namely, the invention was intended for damage analysis of transportation vehicle parts, employing a detection box in real-world applications. Despite the succinct nature of these details in the priority document they proved adequate in addressing the eligibility concerns pointed out by the US examiner. Therefore, our agent supplemented the above technical features into the original claim 1 with additional explanations, leading to the eventual authorization of the invention in the US.

Another case involved a 3D data reading and writing method, where the initial claim 1 described “using a loop cache module to horizontally divide the 3D image; and using a segmented cache module to divide the multi-layer network of the image processing algorithm into two or more segments”.

This case's terminology is representative. The word “module” appears frequently in Chinese patent applications, and aims to expand the scope of inventions or circumvent the eligibility problem of pure algorithmic inventions. Chinese examiners usually have no objection to the use of the word “module”, but in US patent applications, framing algorithms as entity structures using “module” often results in unintended consequences. US examiners might raise issues of eligibility, clarity, insufficient disclosure, or even novelty. In this invention, the US examiner did not directly raise the eligibility problem, but used the relevant provisions of means-plus-function to point out that the specific structure of the “module” was not disclosed in the specification and could not be authorized. Since the specification did not involve any specific structural description of the “module”, it is impossible to overcome the deficiency by supplementing the features in the claims or explaining it. Consequently, our agent opted to remove the “module” terminology from part of the claims, shifting the focus to defending the novelty and inventiveness of the remaining technical features. Due to the sufficient reasoning and clear logic of the argument, this invention was eventually authorized.

If the specification does not involve any entity structure, it can be argued from the perspective of “improvement”. In a certain case involving a high-precision frequency measurement system, the original claim 1 described “a Fourier transform module, connected to a filter module to obtain a frequency domain signal by performing a discrete Fourier transform on the date”. This invention also used the word “module” in an attempt to avoid the eligibility problem. Unlike the previous invention, the US examiner in this invention directly pointed out that the claimed invention is directed to a non-statutory subject matter, stating that the relevant description involved mathematical concepts and that the modules were not real particular machines.

Our agent knew that the specification of this invention did not involve any entity structure, so our agent sought a strategic breakthrough to address this eligibility challenge. During the first round of responses, the agent identified several specific components within the module from the specification. However, these components were essentially algorithms, albeit named akin to entity structures, such as variable extractors and selection circuits. Efforts were made to integrate these features into claim 1, aiming to formally eliminate any blatant eligibility concerns. The examiner stated his view in the second office action that the addition only includes software features or general computing functions that can be executed by general-purpose computers, and still cannot overcome the eligibility problem. In the second response, the agent pivoted to argue from the standpoint of “improvement”, emphatically discussing the invention's contributions and advancements within its field. The discourse included the individual and collective problem-solving aspects of the modules, all of which were documented in the specification. This approach ultimately enabled the present invention to overcame the eligibility problem and secure authorization.