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2015 Fall Newsletter - Cooking with Alice: A Recipe for Responding to § 101...
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  Fall 2015

  BPLA Newsletters

 BPLA NEWSLETTER
 Volume 46, Issue 3

Cooking with Alice: A Recipe for Responding to § 101 “Abstract Idea” Rejections

by Greg Gerstenzang of Lando and Anastasi



Greg Gerstenzang


In last year’s decision in Alice Corporation v. CLS Bank International, 573 U.S. ____ (2014) (“Alice”), the Court held that claims directed to abstract ideas without more should be rejected under 35 U.S.C. § 101.  Since this decision, the number of patent applications directed to computer based methods that have had claims rejected under § 101 as allegedly directed to “abstract ideas” has skyrocketed.  Applicants have had little luck having these rejections overturned on appeal to the Patent Trial and Appeal Board (PTAB), with the vast majority of applications having  § 101 rejections appealed to the PTAB affirmed as being invalid under § 101.

 

Applicants have been challenged with how to respond to rejections of claims of a patent application under § 101 as directed to an “abstract idea” (Alice rejections) per the guidance developed by the United States Patent and Trademark Office (PTO) after the decision in Alice was issued.  The following is a list of possible ingredients that might form at least part of a recipe for successfully overcoming Alice rejections.

 

Ingredient: Challenge the Prima Facie case

             

Under the Administrative Procedure Act (APA), 5 U.S.C. § 500 et seq., agency decisions, including the rejection of claims of a patent application by the PTO, must be supported by “substantial evidence.”  Yet Alice rejections issued by the PTO often consist of a bare assertion by an Examiner that the claims at issue are directed to an abstract idea without “something more” that would render them patent eligible.  The opinion of an Examiner, however, does not qualify as “substantial evidence”[i] in the sense of the APA.  The Manual of Patent Examining Procedure (MPEP) requires an Examiner to provide “clear rationale supporting the determination that an abstract idea has been claimed.”[ii]  Thus, if an Examiner has not articulated clear reasoning supporting the determination that a claim is directed to an abstract idea or has not provided “substantial evidence” that the alleged abstract idea is the type of abstract idea that should render a claim ineligible for patentability or why the claim does not include “something more” than a recitation of the alleged abstract idea itself, the Examiner has not satisfied the burden[iii] of establishing a prima facie case of unpatentability.

 

The July 2015 update regarding subject matter eligibility published by the PTO (the “July 2015 update”) implies that an Examiner need not present evidence supporting a rejection of a claim under § 101as being directed to an abstract idea.  This guidance, however, is inconsistent with the APA, and thus may not survive judicial review.

 

Ingredient: Demonstrate that the Rejected Claims Include “Something More” than the Alleged Abstract Idea

 

A claim that recites a practical application of an abstract idea should be subject matter eligible for patentability as reciting “something more” than an abstract idea per se.  In Alice, the Court found the claims at issue to be ineligible for patentability because they were directed to the abstract idea of intermediated settlement without “something more”[iv] that would render the claims to be patent eligible.  The Court, however, expressed that a claim including an abstract idea that recited an application of the abstract idea to produce “a new and useful end” should be eligible for patentability.[v]  The MPEP recites that claims directed to “a practical application of an abstract idea” should not be rejected under § 101.[vi]  Thus, if an Applicant can show that a claim recites a practical application of an alleged abstract idea rather than the abstract idea itself the claim should be eligible for patentability.

 

Examples of practical applications of abstract ideas include control of an industrial process[vii], an improvement in “the functioning of the computer itself”, or causing “an improvement in any other technology or technical field.”[viii]  The Court in Alice, however, indicated that the recitation of the application of “conventional steps, specified at a high level of generality,” to a method already “well known in the art”[ix] would not be sufficient to render a claim directed to an abstract idea patent eligible.  Thus, the “something more” recited in a claim should be something that is not “well known in the art.”  If an Applicant can overcome the rejection of a patent claim under 35 U.S.C §§ 102 and 103, this may be evidence that the claim includes subject matter that is not “well known in the art” and thus includes the “something more” that should render the claim patent eligible.

 

Additionally, it may help if an Applicant can recite specific, narrowly-defined, technically-based novel features of implementations of an invention in the claims of an application.  Narrowly-defined technically-based features are less likely to be considered “conventional steps, specified at a high level of generality” than more broadly defined features.

             

Ingredient: Demonstrate that the Claim does not Preempt Application of the Alleged Abstract Idea

 

If an Applicant can show that a claim allegedly directed to an abstract idea does not preempt use of the abstract idea, the claim should not be rejected under § 101.  The Court has articulated that the rationale behind the rejection of patent claims directed to “abstract ideas” under § 101 is to avoid preemption of practice of all practical forms of the “abstract idea.”  It is not enough that some aspect of a judicial exclusion is preempted because, by design, claims preempt.  If the claims of a patent application do not preempt all practical uses of the “abstract idea” to which they are allegedly directed, they should not be rejected under § 101.[x] 

 

If an Applicant can establish the abstract idea that an Examiner asserts that a claim is allegedly directed to can be practiced in ways that do not infringe the claim, this should be convincing evidence that the claim does not preempt the abstract idea, and is not the type of claim that the Court would have considered to be ineligible for patentability.  One manner in which an Applicant can establish that a claim at issue does not preempt the abstract idea that the Examiner asserts the claim is directed to is by overcoming any rejections under § 102 to other references allegedly involving the same abstract idea.  Alternatively, the Applicant can establish that a claim does not preempt the practice of all practical forms of the alleged abstract idea by pointing to well-known practices that involve the alleged abstract idea but that would not infringe the claim.[xi]

 

In the July 2015 update, the PTO asserts that questions of preemption are inherent in the two-part framework from Alice that Examiners are instructed to use when analyzing a claim for subject matter eligibility, and that no separate preemption analysis need be conducted.  However, if an Applicant can show that the claims of a patent application do not preempt all practical uses of the “abstract idea” to which they are allegedly directed, this may be evidence that the two-part analysis was not properly conducted.

 

Additionally, it may help to claim an invention as narrowly as possible while still providing meaningful protection for the invention.  Narrower claims would be less likely to preempt an alleged abstract idea than broader claims.

 

Ingredient: Analogize the Claim to one of the Examples Provided in the PTO Guidance or found in the Case Law

 

To provide additional direction to the Examiners regarding what may be required to render a claim in a patent application eligible or ineligible for patentability under § 101, the PTO issued a memo on January 27, 2015 including a number of examples of claims that should be considered patent eligible and a number of claims that should not be considered patent eligible.  The memo also included an analysis demonstrating the reasoning that was used to make the decision as to the patent eligibility of each example.  Additional examples were provided in the July 2015 update.  The specific fact patterns presented provide a tool from which Applicants may argue that claims rejected under § 101 as allegedly directed to an abstract idea are similar or analogous to one or more of the patent eligible examples, and thus are directed to patent eligible subject matter for at least the same reasons.  In one particular example, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (referred to in the PTO Guidance) the CAFC held that the claims at issue were eligible for patentability under § 101 because “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” 

 

If an Applicant can show that the claims of an application, like those in DDR, are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” this may be persuasive in convincing an Examiner that the claims should not be rejected under § 101 for reciting an abstract idea.

 

Further, the July 2015 update instructs Examiners that a claim should not be rejected under § 101 as being directed to an abstract idea unless the alleged abstract idea is similar to at least one concept that the courts have identified as being an unpatentable abstract idea.  An Applicant thus should challenge an Examiner to identify the court case in which the abstract idea to which a claim is allegedly directed was determined to be an unpatentable abstract idea or to otherwise withdraw the rejection as being inconsistent with the July 2015 update.

 

Ingredient: Demonstrate that the Claims Pass the Machine-or-Transformation Test

 

In Bilski v. Kappos, 561 U.S. 593 (2010) the Court noted that the machine-or-transformation test is a “useful and important clue” for determining subject matter eligibility of a claim of a patent application.  Although this test does not provide a definitive test for determining if a patent claim is eligible for patentability, if a claim passes the machine-or-transformation test, this is persuasive evidence that the claim is directed to patentable subject matter.  Further, post-Alice, in Ultramercial, Inc. v. Hulu, LLC, 772 F. 3d 709 (Fed. Cir. 2014), Judge Lourie offered that an abstract idea is “an abstraction--an idea having no particular concrete or tangible form.”  Thus, per Judge Lourie’s definition of an “abstract idea,” if a claim recites real world elements that are “concrete” and “tangible” the claim should not be considered directed to an abstract idea per se.

 

Recitation of a general-purpose computer in a claim would likely be insufficient for a claim to satisfy the machine-or-transformation test.  In Alice, the Court held that “simply implementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that principle.”[xii]  However, if an Applicant can show that a claim recites a method performed on a special purpose computer or results in some form of transformation of the computer or a physical transformation in an object or system external to the computer, this may be sufficient to pass the machine-or-transformation test and may be convincing evidence that the claim should not be rejected under § 101. 

 

As the law develops and further cases are decided in the Federal Circuit and Supreme Court, the criteria for establishing a claim involving an abstract idea as eligible or ineligible for patentability may be clarified.  Until then, practitioners may find some of the above considerations possible ingredients in a “secret sauce” for responding to Alice rejections.

 

 



[i] In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000); In re Dembiczak, 175 F.3d 994, 999–1000 (Fed. Cir. 1999) (broad conclusory statements about the teaching of references are not “substantial evidence”); Donohue v. Barnhart, 279 F.3d 441, 446 (7th Cir. 2002) (“Evidence is not ‘substantial’ if vital testimony has been conjured out of whole cloth”)

[ii] MPEP § 2106(II)(B)(2)

[iii] “The examiner bears the initial burden ... of presenting a prima facie case of unpatentability.”  In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); MPEP 2106(III).

[iv] “Accordingly, in applying the §101 exception, we must distinguish between patents that claim the “

‘buildin[g]block[s]’” of human ingenuity and those that integrate the building blocks into something more.” Alice slip op. at 6.

[v] “Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.  See

Diamond v. Diehr, 450 U. S. 175, 187 (1981).  “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).” Id.

[vi] MPEP § 2106 (III).

[vii] Diamond v. Diehr, 450 U. S. 175, 187 (1981).

[viii] Alice slip op. at 7.

[ix] Alice slip op. at 11.

[x] “We have described the concern that drives this exclusionary principle as one of preemption.” (Alice slip op at 5.)  Patents on “building blocks of human ingenuity” “would risk disproportionately tying up the use of the underlying” ideas, “and are therefore ineligible for patent protection.”  Id. at 6. (internal quotations and citations omitted). 

[xi] “It is hard to show that an abstract idea has been preempted if there are non-infringing ways to use it in the same field.” McRO, Inc. v. Activision Publishing, Inc., 2014 U.S. Dist. LEXIS 135152 (C.D. Cal. Sept. 22, 2014).

[xii] Alice slip op. at 12.

 

Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570

www.bpla.org


 

 

 

 

Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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