I wish I had never met Alice! I feel she’s imposed on me, much like how a spouse is imposed on another in an arranged marriage or a mother-in-law that overstayed her welcome. Alice is here to stay. Of course I’m referring to the 2014 decision of the United States Supreme Court about patentable subject matter, Alice Corp. v. CLS Bank International (commonly known in short as “Alice”).
The danger in a decision like this lies in its indiscriminate application to all patent applications, especially those which have been considered patent subject matter eligible under the most basic premise, i.e., “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Since the decision, the USPTO has issued numerous Interim Guidance examples at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0 on how to apply Alice and it is continuing to do so in response to further public outcry. However, its application appears to be largely Examiner-dependent. Understanding the Examiner’s motivation in making the 35 USC 101 rejections based on Alice is half the battle. Every Examiner’s authority is confined to a “box,” a box that’s defined by his or her training at the USPTO and the Guidance. Fortunately, there are those Examiners who work within the confines of Alice but who refuse to take Alice at its face value.
At first blush, even the most seasoned patent practitioner can probably be convinced that every claim he or she put together claims laws of nature, natural phenomena, abstract steps, routine mathematical formulas and can be practiced alternatively by mental steps and pen and paper, or the steps are executable on a generic computing device. That’s the power of suggestion an Examiner is exerting in a rejection. If the words “abstract idea” are thrown around enough times in a rejection, even the hardiest of us patent practitioners can be swayed. To make matters worse, if you break the steps of every method down to their most basic elements, I bet you can see how that arguably “can” make sense. However, I bet you can quickly see how that can also apply to 99% of all issued software and business method patents. So can these patents all be invalidated? I don’t think so. Let’s look at an example where we’ve successfully overcome Alice rejections:
Example Rejection and Response:
“Claims _______ are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more.”
Our job is to point out that the steps rejected are not directed to abstract ideas. To help point this out and anticipate what other rejections (e.g., law of nature, natural phenomenon, etc.) the Examiner may use in a subsequent rejection, we may also want to point out that the claimed subject matter is new and concrete and no part of the claim is left to interpretation. Obviously, in the independent claims, the proper level of abstraction needs to be ascertained for scope purposes. We must not severely compromise the scope and breadth for allowance unless it is the client’s wish. In this example, the Examiner fails to recite an example “rejected claim” from the Guidance. More recently, presumably in response to the many Office Action responses pointing out the deficiency, Examiners have started to quote example “rejected claims” to demonstrate claims that are considered abstract. One argument worth pointing out is the goal of the Patent Office (which represents the public’s interest) to prevent barriers for future innovations. Therefore, it’s important to point out how the present steps are not so basic, simple, elemental and fundamental that they form basic building blocks for future innovations.
Example response:
“The Examiner’s rejection classifies the invention an abstract idea. This fails to take into account that the claimed subject matter is a concept of relatively recent origin. Applicant contends that the claimed subject matter is not an “abstract idea” within the meaning of Alice because it is not a long-prevalent and fundamental practice, no matter how widespread, in comparison to the abstract ideas of risk-hedging and intermediated settlement relied upon by the Alice court, which have been in widespread use for many centuries throughout the world. Moreover, the Examiner’s alleged abstract idea is not related to commerce or finance and therefore is not an “abstract idea” according to Alice.”
“According to the Alice two step test, even if a claim is directed to an abstract idea, the claim is only patent ineligible if the claim elements fail to recite “significantly more” than the abstract idea, such that the claim as a whole merely recites the abstract idea and then merely provides an instruction to apply the abstract idea. Claims _______ are directed to significantly more than the alleged abstract idea. There are express limitations (e.g., method steps) in the rejected claims which go beyond merely providing an instruction to apply the alleged abstract idea, including the steps of, as in claim ______:
(a) obtaining a _______ between each of said at least two _______ devices and each of said only two _______ devices based on a _______ between said one of said at least two _______ devices and said one of said only two _______ devices;
(b) establishing a pattern of an output of said ________ device with respect to said ________ obtained in said obtaining step; and
(c) comparing said pattern of an output of said _________ device to a plurality of possible patterns corresponding to a plurality of possible _________ of said _______ device, whereby if one of said plurality of possible patterns matches said pattern, said pattern indicates the location of said _______ device.
The examiner defines the abstract idea in just a few words, and the claim includes several detailed method steps which cannot be inferred from the examiner’s definition of the abstract idea, thus claims ________ do more than merely recite an abstract idea and provide an instruction to “apply it.””
“The Alice Court’s treatment of Diamond v. Diehr is instructive in this regard. According to the Alice opinion, even though the claims in Diehr recited an abstract idea in the form of a well-known mathematical equation, the additional steps of feeding temperature measurements into a computer and then using the computer to repeatedly apply the formula to calculate the remaining cure time inside a rubber mold was sufficient to transform the patent ineligible formula into a patent eligible application of the formula. The Diehr example demonstrates that the “significantly more” requirement need not require much more than input of data and performance of repeated calculation of that data by a computer to transform a patent ineligible abstract idea into a patent eligible application of that idea. The claimed method steps meet this “significantly more” standard.”
“The subject matter of claims _________ also satisfy the second test in Alice in that the claims do not attempt to preempt all possible uses of the abstract idea by “attempt[ing] to tie up use of the mathematical relationships”. The Office Action cited art shows some other use of the abstract idea. The claim limitations in the claims at issue are not found in the cited references US _________ and _________. These distinguishing limitations in Applicant’s claims __________ distinguish from that which is previously known in the cited references.”
“The distinguishing limitations are not generally known, are not routine and conventional, are not found in the cited references, and are not found in the alleged abstract idea. The distinguishing limitations constitute the “significantly more” than the abstract idea, and constitute the “significantly more” than the instruction to implement the abstract idea on a generic computer. The claims do not attempt to preempt essentially all possible uses of the abstract idea, as the claims have narrower limitations, viz., the distinguishing limitations. The claims include concrete (i.e., non-abstract) limitations (these may be part of the known foundation), which are not part of the alleged abstract idea, and that the concrete limitations plus the distinguishing limitations (there may be some overlap) form a claim to a specific concrete article, or method involving a specific concrete article, etc., which, again, is not shown in the alleged abstract idea.”
“The Examiner’s attempt to dismiss relevant arguments as unconvincing, and unresponsive to factual findings are not properly Officially Noticed or not properly based upon common knowledge, per MPEP (the Manual of Patent Examining Procedure) 2144.03 “Reliance on Common Knowledge in the Art or ‘Well-Known’ Prior Art” section C, subtitled “If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding with Adequate Evidence.” A USPTO Examiner assertion that the claims of the Applicant are not significantly more than an instruction to apply an alleged abstract idea to a generic computer (or other machine or article), or other 35 USC §101 rejection, can be challenged as not factually based, and not properly officially noticed nor properly based upon common knowledge, using the above factual findings.”
This strategy worked for us in more than one patent prosecution. Feel free to adapt it to your own Office Action responses. If you have additional strategies, I’d love to hear from you.
About Cheng-Ning Jong
The focus of Mr. Jong’s patent practice before the USPTO is in patent preparation and prosecution, starting from boiling down each client’s invention into its essence to securing the broadest possible claims for my clients based on their commercial goals. Mr. Jong is a strong believer in educating his clients in the patenting process so that he can spur the creation of new concepts and embodiments never considered before. Mr. Jong’s approach often results in patent clients leaving his office with a wealth of knowledge about patenting in general and more specifically in the materials expected of them from his office.
Mr. Jong is a Registered U.S. Patent Agent (Registration No.: 56551) and also a licensed Professional Engineer (Registration No.: 083586) in the state of New York. Mr. Jong is also the founder/owner of PatentSlice.com, an automated service that helps casual patent readers and patent practitioners alike, in more quickly grasping and analyzing the concepts of existing inventions and also your own patent drafts.