Skip to content

Alice Applied: A Report from the Trenches About § 101 at the USPTO

Alice Applied: A Report from the Trenches About § 101 at the USPTO published on 1 Comment on Alice Applied: A Report from the Trenches About § 101 at the USPTO

The Alice decision is now sixteen months old, and its effects still reverberate throughout patent law – both from the top down (courts continue to grapple with the broad legal implications of Alice), and from the bottom up (examiners are tasked with applying Alice to specific applications). The ongoing task of reconciling legal theory and daily examination practice weighs heavily upon the USPTO administration, and specifically the Office of Patent Legal Administration.

Following the July 2015 Update to the Interim Guidance on Patent Subject Matter Eligibility, the USPTO is soliciting public comments about the content. This solicitation presents an opportunity to report upon the “ground truth” of how examiners are applying 35 USC § 101 in daily practice – both as a reflection of the impact of the Interim Guidance and the July Update, and as the basis for recommendations for further adaptation of the Guidance.


Like any complex legal process, U.S. patent law is in constant flux. 35 USC and 37 CFR are updated through an incessant series of “patent reform” measures; daily court opinions alter the application of statutes to cases; and the USPTO’s priorities are adjusted as often as its leadership.

Even against this backdrop of change, the Alice decision presents a unique challenge to the patent system. The Supreme Court has frequently pursued three distinct objectives:

  1. Reversing the Federal Circuit’s activist attempts to clarify patent law (as shown by its unprecedented involvement in patent law);
  2. Expanding the discretionary powers of reviewers to make patent decisions (as per KSR v. Teleflex); and
  3. Issuing broad, high-level proclamations about patent law, and expecting lower decision-makers to work out the messy systemic details (as per Bilski v. Kappos).

But rarely in the history of patent law has one Supreme Court decision asserted all three objectives concurrently – as in: “Examiners and courts should have greater latitude in rejecting ‘abstract’ applications – but we refuse to define the limits of this critical legal test – and their decisions had better yield results that we find acceptable, or else we will consider revisiting the issue yet again (as per Mayo, and Myriad, and Bilski, and Metabolite…)”

Throughout the patent review apparatus (from the examining corps up to the Federal Circuit), the unique message of Alice has provoked an interesting response. For any invention within the (indefinitely) broad reach of Alice, a declaration that the invention is patent-eligible is a bold act – one with potentially multiple rounds of higher-authority review, and the potential to be reversed. On the other hand, declaring an invention to be patent-ineligible is barely worth commenting – as evidenced by the brutal record on 101 ineligibility by the PTAB and district courts, and the Federal Circuit’s habit of affirming lower decisions without even an opinion.

Patent examiners are positioned at the bottom of this review apparatus. The examiner’s opinion on § 101 patent-eligibility is reviewable by the examiner’s supervisor, the Office of Patent Quality Assurance, the PTAB, various district courts, the Federal Circuit, and the Supreme Court. And this unenviable role, in this unusual climate, has provoked a number of consequences for both patent examination and patent prosecution.

  1. 35 USC § 101 challenges of issued patents are endemic in patent review and assertion.

    Patent-eligibility has become an endemic issue in patent disputes – to the extent that during the oral arguments for Amdocs v. Openet, Judge Plager characterized § 101 challenges as “a plague on the patent system nowadays. Almost every other case comes in on a 101 basis.” 1

    Given these conditions, it can be expected that virtually every issued patent that a patentee seeks to assert will face a § 101 challenge, which requires a review of the examiner’s diligence in considering § 101 – thus placing every examiner’s decision to allow a patent in the harsh spotlight of 101 review. It is small wonder that § 101 rejections are prevalent everywhere, with some art units issuing § 101 rejections in over 90% of pending applications.

  2. Examiners in Alice-targeted art units are punting on patent-eligibility decisions.

    When asked whether a particular application is allowable under 35 USC § 101, examiners within art units where Alice is a major issue typically have one of two responses: “We’ll see,” or “I think so, but you’ll have to take it up with my supervisor or the PTAB.”

    These examiners assert that they are simply not allowed to issue a positive Alice analysis. 101 rejections are being issued pro-forma strictly to preserve the issue on the record – without any genuine intent to reach a conclusion – while the examiners dutifully work through the other issues: novelty, non-obviousness, indefiniteness, restriction requirements, statutory class issues, small claim-drafting formalities. If the case reaches a stage where only the patent-eligibility issue remains – only then will a final determination be made. At that stage, the application will either be allowed – or will be finally rejected under § 101, and the examiner will advise the applicant to file an appeal.

    As a practical matter, this approach makes sense in the short term. A year after Alice, the law of 35 USC § 101 remains volatile – as reflected by the frequent updates to the Interim Guidance – and it is in neither the examiner’s nor the applicant’s best interest to argue about today’s 35 USC § 101 standard, if a very different standard may apply by the time all other issues in the case are settled.

    However, this approach also fails the standard of compact prosecution, and trades short-term efficiency for long-term inefficiency – such as applicants and examiners working diligently through prior art and claim-drafting issues on a case that ultimately fails due to § 101. Even where patent-eligibility can be satisfied, taking up the issue in full only after the others requires additional office actions and RCE fees. And many cases will be dumped onto the PTAB docket simply because examiners – and in some cases, supervisors and art units – do not feel empowered to make affirmative statements about Alice.

  3. § 101 rejection boilerplate templates have proliferated beyond reason.

    A typical § 103 obviousness rejection follows a consistent pattern: it sets forth the standard of law; it identifies the combination of references; it correlates specific claim elements with specific prior art passages; and it sets forth a KSR-style statement about why the references can be combined. This pattern has been developed to use boilerplate as only a framework for the substantive analysis, which can be easily parsed and evaluated.

    By contrast, every Alice rejection looks different from every other Alice rejection – even though all of these rejections present the same argument. A random survey of ten recent office actions containing § 101 rejections revealed – literally – ten different variants. 2

    What possible purpose is served by having dozens of restatements of the same argument? In addition to the sheer redundancy, this proliferation of Alice rejection templates makes the USPTO’s § 101 policies appear sloppy and uncoordinated. Worse, some of these boilerplate templates misstate the principles of the cited cases, or assert outdated legal standards (“machine-or-transformation,” as per Bilski circa 2007; or even “insignificant post-solution activity,” as per Freeman-Walter-Abele).

  4. Alice rejections are entirely boilerplate, with no case-specific analysis.

    Looking again at the examples of Alice rejection templates reveals a lot of boilerplate – and nothing else! Claim language is being pasted into slots in an otherwise generic template, such as:

    The claims are rejected under 35 U.S.C. § 101 because they are drawn to an abstract idea.

    The claim(s) recite ___claim language___. These idea(s) is/are not patent-eligible because such claim(s) recite a law of nature, natural phenomenon, and/or an abstract idea.

    The remaining claim elements, ___claim language___, are purely conventional and do not add “significantly more” to the abstract idea.

    For these reasons, the claims are rejected under 35 U.S.C. § 101.

    The emptiness of such rejections contrasts starkly with the actual Alice decision, which presents eleven pages of case-specific technical explanation as to why the invention and claims under review were patent-ineligible. The USPTO has reduced this extensive review to a copy-and-paste exercise, in the style of Mad Libs – one that is functionally equivalent to a single checkbox:

    The claims are:
    ☐ patent-eligible under § 101, or
    ☒ patent-ineligible under § 101.

    Put another way: the Supreme Court created all of the Alice rationale as elements of a comprehensive review, in the manner of a balancing test – but examiners are treating each individual comment as a set of individual litmus-tests of patent-eligibility:

  5. The generic Alice rejection covers two distinct scenarios: ineligible subject matter, and inadequate claiming.

    Behind the generic Alice rejection, the examiner may have one (or both) of two distinct rationale in mind:

    1. The disclosed invention is abstract. The subject matter is entirely within a non-technical field (e.g.: advertising, pricing, or financial transactions); or, the invention simply has no “technical effect” (e.g.: PlanetBingo, DietGoal). Nothing can be done to salvage the disclosed invention from a 101 rejection.

    2. The claim language is insufficient to satisfy 101. The claim language is either too superficial 3, or too mathematical, or not adequately focus on the technical functionality and “technical effect.” New claims or claim amendments may call out the invention in a manner that satisfies 101.

    Despite these two distinct positions, it is impossible to discern which position the examiner is adopting in a typical, boilerplate-only § 101 rejection. In many cases, this determination is only possible through an examiner interview. 4

  6. Examiners face a low burden for issuing Alice rejections; applicants face a very high burden for traversing Alice rejections.

    An applicant who seeks to traverse an Alice rejection faces a formidable challenge: demonstrating the claims do not recite an abstract idea, or provide “significantly more” than such an idea; that the claimed invention has a strong “technical effect”; and that the claims are not unduly preemptive. Examiners require applicants to explain these concepts in significant detail, on the record, and with references to the portions of the specification that support these arguments. 5

    While a high evidentiary standard for addressing today’s more stringent § 101 requirement is understandable, this requirement contrasts starkly with the extremely low threshold over which examiners assert such rejections. With two keystrokes – Control-C, Control-V – examiners can manufacture a formidable challenge for the applicant.

  7. Examiners are advising applicants to model their claims and arguments upon the patent-eligible examples presented in the Interim Guidance.

    Examiners’ main reference about what patent-eligible claims look like is the set of examples presented in Appendix A of the July Update. Coupled with Diamond v. Diehr and DDR Holdings, these examples are the primary authoritative source that examiners want applicants to invoke to demonstrate the § 101 sufficiency of their claims – which examiners can then cite to their supervisors in support of their conclusion of patent-eligibility.

    Accordingly, examiners strongly advise applicants to select one of the “approved” examples from the Interim Guidance; to draft claims that resemble the approved hypothetical claims; and to present “technical effect” arguments that echo the USPTO’s analysis of the example. (Examiners will express no opinion of the sufficiency of these arguments – but simply recommend this approach as the most promising option.)

  8. The Patent Trial and Appeal Board is asserting Alice rejections even more aggressively than the examining corps.

    As noted by this IP Watchdog article, the PTAB is not only frequently upholding examiners’ Alice rejections – it now frequently introduces new § 101 rejections sua sponte. Where it is reluctant to inject such a new rejection in cases not appealed on patent-eligibility grounds, the PTAB routinely “encourages” examiners to consider adding a § 101 rejection.

The general theme of these observations is that presenting an Alice challenge is trivially easy, and examiners, the PTAB, and accused infringers are invoking it as a matter of course. But these same reviewers are either reluctant or unwilling to assert that any claims satisfy 35 USC § 101 – because such decisions are endlessly reviewable, and are reviewed critically.

Rather than empowering examiners, the Alice decision has had a chilling effect on patent eligibility determinations – composed of fear (reviewers are unwilling to bear the consequences of identifying patent-eligible subject matter), and dismissiveness (reviewers can arbitrarily flush cases down the drain without a meaningful explanation or accountability).

Of course, this culture reflects the attitudes of the Supreme Court and the Federal Circuit – which, in the sixteen months following the Alice decision, have together identified exactly one patent-eligible independent claim. The failure of the high courts to lead on this issue has soaked the lower courts and the USPTO with this culture of invalidity – to the detriment of all.

These observations are presented as the basis for specific recommendations to the USPTO involving the Interim Guidance – of which: more later.


Notes:

  1. Amdocs v. Openet also highlights the severity of the damage wrought by the unreliability of patent law principles. The Amdocs litigation was initiated in 2010, and this oral hearing marks its third trip to the Federal Circuit. Such cases highlight the inefficiency of subjective legal systems: the only way to achieve a definitive answer for a critical legal issue is to litigate it repeatedly.

    The Federal Circuit’s frustration and loss of appetite over § 101 issues – only sixteen months in! – provides a rare glimmer of hope for resolution of this volatile area of patent law. It must also be richly appreciated by Randall Rader, whose comments in CLS Bank v. Alice Corp. observed prophetically that:

    Injecting the patentability test of “inventiveness” into the separate statutory concept of subject matter eligibility makes this doctrine again “the plaything of the judges who, as they became initiated into its mysteries, delighted to devise and expound their own ideas of what it meant.”

  2. Consider the following ten recent Alice rejections (extracted from a random survey of applications featuring the title term “Advertising”):

    • U.S. Patent Application No. 13/891,034:

      The claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all elements both individually and in combination, do not amount to significantly more than an abstract idea. The claims are directed to the abstract idea of advertising which is considered a fundamental economic practice. The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea by itself. Therefore, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

    • U.S. Patent Application No. 13/938,991:

      Claims 1-19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-19 are directed to (invention) which is a fundamental economic practice used to increase sales and therefore an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the generically recited computer elements (location engine, database, and processor) do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation.

    • U.S Patent Application No. 13/949,555:

      Claims 1-20 are rejected under 35 U.S.C. 101 because based upon consideration of the claims as a whole, the claims held [sic] to claim an abstract idea and there are no meaningful limitations in the claims that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself. Therefore, the claims are rejected as ineligible subject matter under 35 U.S.C. 101. The rationale for this finding is explained below:

      (insert two-page explanation of Alice and Mayo)

      Under Part I, the claims are directed to the abstract idea of (invention).

      Under Part II, the abstract idea has not been applied in an eligible manner and fails to provide any technical improvements. Here, the additional element(s) or combination of elements in the claims other than the abstract idea per se amount to no more than: (i) mere instructions to implement the idea on a computer, and (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amount to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.

    • U.S. Patent Application No. 13/572,370:

      The claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In the instant invention, the claims are directed towards the concept of (claim language). However, (claim language) is considered a fundamental economic practice and requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

      Therefore, the claims are drawn to comparing new and stored information and using rules to identify options that the courts have found to be abstract idea (Smart Gene v. Advanced Biological Labs) as delineated by the Interim Eligibility Guidance, and does not go significantly beyond generally linking the use of an abstract idea to a particular technological environment such as a computer implemented method of the claimed features. Thus, the claims are drawn to a patent ineligible abstract idea.

      The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. it should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, the claims are directed to non-statutory subject matter.

    • U.S. Patent Application No. 14/006,076:

      The claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of (invention). The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than mere instructions to implement the idea on a computer, and/or recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.

    • U.S. Patent Application No. 13/814,440:

      The 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, a natural phenomenon, or an abstract idea) without significantly more.

      The claims are directed towards (invention) which is considered to be an abstract idea inasmuch as such activity is considered both a method of organizing human activity a [sic] fundamental economic practice. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims merely amount to the application or instructions to apply the abstract idea.

      The elements of the process are: (claim language)

      The elements of the instant process, when taken alone, each execute in a manner routinely and conventionally expected of these elements. That is, (claim language).

      The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. That is, the elements involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well-understood, routine and conventional. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.

      The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of the computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.

      The claims merely amounts [sic] to the application or instructions to apply the abstract idea on a user device, and is considered to amount to nothing more than requiring a generic computer system to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea in a particular, albeit well-understood, routine and conventional technological environment. Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.

    • U.S. Patent Application No. 14/063,546:

      The 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, a natural phenomenon, or an abstract idea) without significantly more. The Claims are directed to an abstract idea without significantly more. Note the illustrative and not limiting examples of abstract ideas within the “Federal Register Notice: 2014 Interim Guidance on Patent Subject Matter Eligibility” (link provided below): “Mitigating settlement risk; heading; creating a contractual relationship; using advertising as an exchange or currency; processing information through a clearinghouse; comparing new and stored information and using rules to identify options; using categories to organize, store and transmit information; organizing information through mathematical correlations; managing a game of bingo; the Arrhenius equation for calculating the cure time of rubber; a formula for updating alarm limits; a mathematical formula relating to standing wave phenomena; and a mathematical procedure for converting one form of numerical representation to another”.

      These claims are directed to the abstract idea of (invention). This is similar to the abstract idea example of: using advertising as an exchange or currency; processing information through a clearinghouse; comparing new and stored information and using rules to identify options; using categories to organize, store and transmit information. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Thus, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.

      Please see the 35 USC 101 section at the Examination Guidance and Training Materials page on the USPTO.gov website. Particularly note the Federal Register Notice: 2014 Interim Guidance on Patent Subject Matter Eligibility, the Abstract Idea Examples, and the Training Slides (February 2015). The information is available at this webpage: (url).

    • U.S. Patent Application No. 14/129,344:

      Claim 1 is directed to the abstract idea of (claim language). The courts have noted that “comparing new and stored information and using rules to identify options” (SmartGene) is an example of a judicial exception. The claims discloses [sic] a comparable judicial exception such as (claim language). The steps of (claim language) are all steps that describe the abstract idea.

      The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the abstract idea has not been applied in an eligible manner. There is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment. Furthermore, the steps or acts performed (claim language) in independent method claim 1 are not enough to qualify as “significantly more” than the abstract idea itself. The claims are a method of gathering, analyzing, and selecting data and require no more than a general purpose computer or computer system to perform generic computer functions that are well-understood, routine and conventional. Therefore, based on the two-part Mayo analysis, there are no meaningful limitations in the claims that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself. Thus the claims are rejected as ineligible subject matter under 35 U.S.C. 101.

      Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent product claims 1 and 15 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The components (i.e. memory, modules, etc.) described in the independent product claims add nothing of substance to the underlying abstract idea. At best, the systems recited in the claims are merely providing an environment in which to carry out the abstract idea.

      The dependent claims are also rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.

    • U.S. Patent Application No. 13/844,982:

      The claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(1) 1-20 are determined to be directed to an abstract idea. The rationale for this determination is explained below:

      In the instant case, the claims are directed towards (claim language), which is an abstract idea. In addition, (claim language) is considered targeted advertising. Targeted advertising is a fundamental economic practice, which is an abstract idea. Further, (claim language) involves determining a sum. A sum is a mathematical procedure and the disclosed process is a mathematical procedure for converting one form of numerical representation to another. This has also been classified as an abstract idea. Similar claims directed to using categories to organize, store and transmit information in Cyberfone v. CNN have all been found by the courts to be abstract ideas. Further several additional court decisions have identified fundamental economic practices as ideas as well (Alice, Bilski, BuySAFE and Ultramercial).

      The claims do not include additional elements that are sufficient to amount to “significantly more” than the abstract idea because the only additional features in the claims include generic recitations of the hardware component ‘a processor’ that is used to send, receive and manipulate data which are well-understood, routine and conventional activities previously known to the industry and are not disclosed as a separate technology improved by the invention, but rather technology that facilitates the claimed judicial exceptions. The generically recited hardware element does not add meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Because the claims are directed to judicial exceptions and nothing significantly more, the claims are directed to subject matter that is ineligible for patent protection.

    • U.S. Patent Application No. 13/693,470:

      The claims is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Examples of abstract ideas are fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulations. The claims is/are directed to the abstract idea of (claim language). Such as in Digitech which employs mathematical algorithms to manipulate existing information to generate additional information, the claimed concept is directed towards (claim language). The courts have found the concept of comparing information regarding a sample or test subject to a control or target data abstract (see page 5 of the July 2015 Upate: Subject Matter Eligibility). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps require no more than a generic computer. The functions fo the computer are no more than that which the courts have rejected as well-understood, routine and conventional such as “receiving, processing, and storing data” and “receiving or transmitting data over a network”. The claim’s use of “mobile device” and wireless access point device” adds no inventive concept. These devices are being used to create a computer network environment to perform a well-known practice from the pre-internet world. This concept is not “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” (see DDR Holdings, LLC v.s Hotels.com et al. (Fed. Cir. 214)). A computer that “receives and sends information over a network – with no further specification – is not even arguably inventive” (see Buysafe Inc. Vs Google Inc. (Fed. Cir. 2014)). Additionally, the claimed functions of the generic computer represent insignificant data-gathering steps and thus add nothing of practical significance to the abstract idea (see Ultramercial Inc. vs. Hulu LLC (Fed. Cir. 2014)). the additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than mere instructions to implement the idea on a computer, and/or recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amount ot significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.

    • As a recent example: U.S. Patent No. 8,738,278, discloses a “self-balancing vehicle” that consists primarily of a “control logic that drives the first wheel toward self-balancing the first foot placement section… and that drives the second wheel toward self-balancing the second foot placement section.” It’s a self-balancing vehicle, comprising some kind of logic that achieves self-balancing.

      Although hardly the only “results-oriented” patent, this patent is notable because it is owned by Mark Cuban – the primary founder of the Electronic Frontier Foundation (the “Mark Cuban Chair to Eliminate Stupid Patents“) – and both Cuban and the EFF are outspoken opponents of exactly this kind of claim language. Moreover, when asked why the specification failed to recite any substance whatsoever for the “control logic,” Cuban explicitly admitted to “keeping our algorithm to ourself” – specifically so that competitors could not replicate it.

    • This is hardly the only instance where the actual rationale motivating a rejection is hidden behind the generic text of an office action – but Alice exacerbates the information gap between the office action and the examiner’s rationale.
    • In some cases, examiners are requiring applicants to identify support in their specifications for arguments about the “technical effect” achieved by the invention. Of course, the “written description” requirement of 35 USC § 112 ¶ 1 does not extend to a technical explanation of what an invention does. And this requirement cannot be retroactively imposed on patents and patent applications filed before the “technical effect” expectation was asserted in Alice.

1 Comment

Leave a Reply to William Simmons Cancel reply

Your email address will not be published. Required fields are marked *