It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business method patents and applications now receive a higher level of scrutiny under Alice than had previously been the case.
In Alice, the Court set forth a two-prong test for patent-eligibility. One must first determine whether the claim at hand is directed to a law of nature, a natural phenomenon, or an abstract idea (collectively, the judicial exceptions). If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to something significantly more than a judicial exception. Notably, generic computer implementation of an otherwise abstract process does not qualify as something “significantly more.”
The impact of this decision cannot be underestimated - post Alice, approximately 70% of all patents challenged under 35 U.S.C. § 101 have been invalidated in district courts, while the rate of § 101 rejections has exceeded 80% in some of the USPTO’s art units where it was previously below 40%. As a consequence, patentees have become increasingly concerned about whether key patents in their portfolios might be subject to an Alice challenge in litigation, as well as whether their new technologies are protectable.
Nonetheless, there are a few bright points with respect to how one can navigate the § 101 waters post-Alice. Best practices are emerging for prosecuting software and business method inventions under this new regime. Many of these are based on case law, and on guidance provided by the USPTO in December 2014, as well as January and July of last year.
When an applicant receives an Office action containing § 101 rejections, the natural response may be one of confusion or frustration. This is not surprising because the patent-eligibility landscape is anything but clear. Nonetheless, it pays to analyze the rejected claims, their specification, the Office action, recent § 101 cases, and the USPTO’s guidance. Doing so, and applying the techniques below, can help you find a pathway to allowance.
Interview the Examiner
It almost goes without saying that interviewing examiners about rejections is usually productive. This advice applies double to § 101 rejections. Like patent practitioners and judges, examiners are struggling with understanding the nuances of patentable subject matter. As such, individual examiners, as well as different art units, may have varying views on how the Alice test should be applied. For instance, one examiner indicated that any sort of processing on a general-purpose computer held no patentable weight, while another stated that their art unit decided that transmitting a bitstream from one device to another did not establish patent-eligibility unless the recipient did something “non-trivial” with the bitstream. Yet another examiner suggested that adding “processor” and “memory” elements to a claim would render the claim patent-eligible despite the Supreme Court’s view on generic computer components.
Nonetheless, examiners can be swayed by the reasoning in Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions. Unfortunately, there is only one post-Alice Federal Circuit case in which claims survived a § 101 challenge, and the PTAB has not been a paragon of consistency with respect to patent-eligibility. It may instead be beneficial to focus on similarities between the claims at hand and the examples provided in the USPTO’s Interim Guidance, Abstract Ideas Examples, and July Update.
The goal of an interview over § 101 rejections should be to understand the examiner’s specific concerns (which might not be apparent in the Office action) and to suggest one or more approaches that could be used to overcome the rejections. In some cases, relatively minor claim amendments and/or fairly concise arguments may be enough to convince the examiner to withdraw the rejections.
Rebut the Prima Facie Case
The July Update states that “the initial burden is on the examiner to explain why a claim or claims are unpatentable clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.” This burden can be met “by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception.” Notably, the Interim Guidance requires that, when applying the first prong of the § 101 analysis, examiners must “determine whether the claim as a whole is directed to a judicial exception.” Further, when applying the second prong of this analysis, examiners must consider whether claim elements “both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.” Often, § 101 rejections do not meet these requirements.
Many such rejections are conclusory. For instance, one rejection recently received by an applicant merely consisted of the following text:
Claims 1-20 are directed to [alleged abstract idea]. However, this is a mathematical procedure for converting one form of numerical representation to another and is thus an abstract idea. Furthermore, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself.
In this rejection, there is no evidence that the examiner considered the claim as a whole when applying prong one, and there is also no evidence that the examiner considered the recited ordered combination of elements when applying prong two. As such, the applicant should rebut the rejection for failing to meet the examiner’s burden under § 101 as elucidated by the USPTO itself.
Such a rebuttal may be unlikely to win the day unless it is accompanied by arguments that address the substance of the claimed invention. In most cases, the rebuttal will prompt the examiner to provide a better, non-conclusory rejection, which still makes it a useful exercise.
(When to and When not to) Argue Prong One
As noted above, the first prong of the Alice test is used to determine when the claim is directed to a judicial exception to patentable subject matter. While it may be tempting to argue prong one in each and every response to a § 101 rejection, doing so will not be productive in some situations. For instance, when the claim involves mathematical calculations and/or financial aspects, it may be more efficient to focus your arguments on prong two.
On the other hand, the USPTO has recognized that certain types of inventions are inherently patent-eligible despite incorporating a judicial exception. In the Interim Guidance, the USPTO states that inventions clearly not seeking to “tie up any judicial exception such that others cannot practice it,” pass muster under § 101, and the two-prong analysis need not even be applied. A particular example thereof is “a robotic arm assembly having a control system that operates using certain mathematical relationships.” According to the USPTO, this “is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility.” An analogy that can be made between this example and the claims at hand may go a long way in convincing the examiner that that claims are patent-eligible.
In its Abstract Ideas Examples, the USPTO indicated that a claim “directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file” is not abstract. Instead, the claimed “isolation and eradication of computer viruses, worms, and other malicious code, [is] a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract.” Since the example claim focuses on scanning the communication byte-by-byte, similar reasoning could be used to argue that claims directed to data compression or encryption are non-abstract as well.
Regardless, when arguing prong one, it is important to remind the examiner that the claim must be considered as a whole. Doing so may limit the examiner’s ability to view each element independently, and thus ignore certain elements when identifying any alleged judicial exception contained therein.
Argue Prong Two
Most § 101 arguments will be won or lost on prong two. Here, the applicant has numerous tools for establishing that its claim recites statutory subject matter.
Still, given the vagueness of both prongs of Alice, patent-eligibility often comes down to whether the claims at hand are more or less similar to other claims that have previously been found to be patent-eligible or patent-ineligible by the courts or the USPTO. For instance, for any claim reciting a financial transaction on a general purpose computer, it will be difficult to convince the examiner that the claim is not too abstract for patenting due to the claim’s high-level similarity with those of Alice and Bilski v. Kappos.
On the other hand, there are claims that have been found patent-eligible in case law, as well as example claims deemed patent-eligible by the USPTO. Applicants should know these cases and examples, and be prepared to liken their claims to the claims thereof.
In Alice, the Supreme Court wrote that claimed improvements to a computer itself or to another other technology or technical field could provide the required something significantly more than a recited judicial exception. But, the only two examples from case law in which the Supreme Court or Federal Circuit found that a claim recites “significantly more” are Diamond v. Diehr and DDR Holdings, respectively.
In the former, the claims recited a rubber mold being controlled according to a mathematical equation, but also required constant measurement of temperature of the mold cavity, recalculation of the appropriate cure time using the constantly updated measurements, and opening the mold when the rubber was deemed to be cured. This, according to the justices, provided signicantly more than mere calculation of the equation – namely, an improvement to an existing technological process.
In the latter, the claims were directed to creating a composite web site by changing how hyperlinking operates. Visitors clicking on certain links are served “an automatically-generated hybrid web page that combines visual ‘look and feel’ elements from [a] host website and product information from [a] third-party merchant’s website related to the clicked advertisement.” While related to advertising, which has been deemed abstract by the courts, the Federal Circuit found these claims to be patent-eligible because “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
Applicants might be tempted to make an analogy between any software or business method claim and those of Diehr or DDR. But in some cases, this would be a mistake. Many modern software inventions lack the physicality of Diehr. Further, some examiners have been viewing DDR as being virtually limited to its holding. As a consequence, these individuals are reluctant to view improvements to problems related to computers in general, rather than problems related to computer networks, as falling under the DDR rubric. Citing Ultramercial v. Hulu, the Federal Circuit wrote that “not all claims purporting to address Internet-centric challenges are patent-eligible for patent,” and examiners seem to be taking this statement to heart.
As an alternative to the case law, the USPTO has been helpful in fleshing out categories of patent-eligible inventions with specific examples in its Interim Guidance, Abstract Ideas Examples, and July Update.
For instance, according to the USPTO, a claim directed to transmitting stock quote information from a server device to a client device, where the transmission activates a stock viewer application to retrieve further information from a data source, is patent-eligible. Like DDR, this claim addresses an Internet-centric solution and goes beyond merely linking use of an abstract idea to the Internet. This example claim can also be used as a blueprint for claiming other types of client / server transactions where one device causes the other to carry out a task that goes beyond mere processing.
In another example, a claim recites dynamically adjusting the layout of a graphical user interface (GUI), such that textual information in one window that is obscured by another window is automatically moved to a non-obscured location in its window. Despite any mathematical operations that could be used to facilitate this invention, the claim is patent-eligible because it addresses “a specific application . . . that improves the functioning of the basic display function of the computer itself.”
As a warning, applicants must remember than the USPTO’s guidance may have little weight in a reviewing court. Thus, while one might be able to rely on the USPTO’s examples of patent-eligible claims to shepherd claims toward allowance, those allowed claims could potentially be rendered invalid in litigation. Until the Federal Circuit weighs in on more § 101 cases, the viability of these example claims are in question. Nonetheless, they appear to be sound in view of the case law, and applicants should keep them in mind when drafting or amending claims.
Regarding the judicial narrowing of § 101, the Supreme Court explained that “the concern that drives this exclusionary principle [is] one of pre-emption.” Particularly, monopolization of the basic tools of scientific and technological work would impede innovation more than it would tend to promote it. Thus, the exceptions to § 101 are driven by “concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.”
In the July Update, the USPTO indicated that, in its view, the two prong process of Alice inherently includes a preemption analysis. Particularly, that prong two separates out inventions that preempt the fundamental building blocks of knowledge from those that do not.
Like rebutting the prima facie case, asserting the non-preempting nature of rejected claims can be helpful, but is unlikely to be the winning argument by itself. Every claim preempts something – the issue is whether a claim preempts a judicial exception rather than an application thereof. For example, the claims found patent-ineligible in Ultramercial were quite narrow, but according to the Federal Circuit, too conventional to be anything less than abstract. Similarly, the USPTO has warned that “the absence of complete preemption does not guarantee that a claim is patent-eligible.”
When arguing non-preemption, it can be helpful to refer back to the examiner’s characterization of the judicial exception contained in the claim, especially if this characterization is very high-level. For instance, if the examiner states that a claim for setting up a telephony call in a network is directed to the abstract concept of client / server communication, the applicant can point out a few examples of client server communications that the claim would not preempt. In describing what the claim does not cover, however, care must be taken to avoid introducing file wrapper estoppel.
Ultimately, non-preemption is another tool in the applicant’s toolbox, and should be used judiciously to augment more substantive arguments.
As time goes on, we expect that the contours of patentable subject matter will be more clearly defined. Today, we are seeing the beginnings of such clarity by way of case law and USPTO guidance. The examples discussed herein provide some ways in which software or business methods can be claimed in order to avoid or overcome a § 101 rejection. Clearly, these techniques might not work for all claims, and other techniques may exist. For now, this area of the law remains a moving target, and best practices are still evolving.
 134 S. Ct. 2347, 2354 (2014).
 Id. at 2355.
 Id. at 2358.
 See http://www.bilskiblog.com/blog/2015/11/alicestorm-for-halloween-its-scary-out-there-.html; http://www.bilskiblog.com/blog/2015/06/alicestorm-a-deeper-dive-into-court-trends-and-new-data-on-alice-inside-the-uspto.html; http://www.bilskiblog.com/.a/6a011570f4033a970c01bb084b6c5b970d-pi.
 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014) [hereinafter, Interim Guidance].
 U.S. Patent and Trademark Office, Examples: Abstract Ideas [hereinafter, Abstract Ideas Examples], http://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf.
 U.S. Patent and Trademark Office, July 2015 Update: Subject Matter Eligibility [hereinafter, July Update], http://www.uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf.
 See, e.g., McRO, Inc. v. Naughty Dog, Inc., 49 F.Supp.3d 669, 675 (C.D. Cal. 2014) (comparing the two-prong Alice test to Justice Stewart’s famous “I know it when I see it” test from Jacobellis v. State of Ohio); Cal. Inst. of Tech. v. Hughes Commc’ns Inc., 59 F.Supp.3d 974, 980 (C.D. Cal. 2014) (stating that the Supreme Court’s patent-eligibility cases “often confuse more than they clarify [and] appear to contradict each other on important issues.”).
 DDR Holdings LLC. v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014).
 Compare Ex Parte Bruce Gordon Fuller, et al., 2015 WL 3467122 (P.T.A.B. May 28, 2015) (finding a claim directed to graphing a curve on a user interface to be patent-eligible) with Ex Parte Aaron J. Klish, 2015 WL 4608168 (P.T.A.B. July 29, 2015) (finding a claim directed to building and displaying a user interface is patent-ineligible).
 This is not to say that all § 101 rejections are easily overcome. Patent-eligibility is highly fact sensitive, and some types of inventions will be more difficult to prosecute than others. For instance, § 101 rejections for inventions directed to financial transactions or calculations performed on a general-purpose computer are particularly challenging to surmount.
 July Update, at 6.
 Interim Guidance, at 74622 (emphasis added).
 Id. at 74624 (emphasis added).
 Id. at 74625.
 Abstract Ideas Examples, at 3.
 Id. Arguably, a similar point could be made to overcome a § 101 rejection during the prong two analysis.
 561 U.S. 593 (2010).
 Alice, 134 S. Ct. at 2359.
 450 U.S. 175 (1981).
 773 F.3d at 1259.
 Diehr, 450 U.S. at 187.
 Alice, 134 S. Ct. at 2358. The fact that the result of this process was cured rubber, a physical object, may have helped the claims seem less abstract.
 DDR Holdings, 773 F.3d at 1257.
 Id. at 1258.
 U.S. Patent and Trademark Office, July 2015 Update Appendix 1: Examples, at 4, http://www.uspto.gov/sites/default/files/documents/ieg-july-2015-app1.pdf.
 Id. at 7-8.
 Id. at 12.
 Alice, 134 S. Ct. at 2354.
 July Update, at 8.
 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014) (the Court did not explicitly discuss preemption in this decision, but implied that claiming the abstract idea of “advertising as currency” using the Internet effectively was an attempt to monopolize the idea itself).
 July Update, at 8.