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Q&A Follow Up – Alice at 2 ½: Evolving Case Law and Perspectives on USPTO Guidelines

February 10, 2017

Q&A Follow Up – Alice at 2 ½: Evolving Case Law and Perspectives on USPTO Guidelines

February 10, 2017

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After our recent webinar on January 25, 2017, we received a series of questions from various attendees. We have provided responses for each question below.

Q: “I am bothered a bit by the court’s use of the term improvement, a very subjective term. When arguing an improvement, do we win if we show something that could not previously be done is an improvement or does it have to be more efficient in the view of the court?”

A: Yes to both “could not be previously done,” and “more efficient.” I think that the more efficient improvement is the easier road. If you can show that the invention, as claimed, provides a technical improvement (e.g., reduced memory consumption, load on processors, etc.), Enfish says that that is not abstract (so pass under step 1 of Alice), and BASCOM says that it is “something more” (so pass under step 2 of Alice). Either way, if you have a technical improvement you should clear patent-eligibility. McRO found eligibility in a claimed invention that enabled certain tasks to be automated, which previously wasn’t achievable (“It is the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” McRO, Slip Op., p. 24, citing Alice, 134 S. Ct. at 2358.).

Q: “The improvement in technology of Enfish looks like an improvement in software. So computer programs are, for Alice purposes, “technology”? And a different computer program is a difference in the way a computer operates? Or did the Enfish invention involve a new chip structure and/or machine code?”

A: I would describe a computer program as encoding a patent-eligible (if claimed properly) algorithm. It is the algorithm’s effect on the underlying technology that executes the algorithm that was the win in Enfish . More particularly, the self-referential data schema of Enfish improved (with respect to technical resources, such as processors and memory) data storage and querying of databases. In that sense, the improvement of Enfish was not in the software itself, but in executing the software there is improvement in the underlying technical system. Enfish did not touch on new chip structures or machine code (which may be patent-eligible for different reasons). Instead, Enfish was about the data schema (e.g., the manner in which data is stored in a database).

Q: “Can you address the preemption/tie-up issue vis-a-vis abstract ideas? Specifically, do you have a view why examiners jump right to the “significantly more” analysis rather than using the Alice/Mayo streamlined approach when it’s fairly clear that there is no tie-up?”

A: The way Examiners handle rejections likely has less to do with the Federal Circuit case law, and more to do with their level of training / understanding of the guidelines, and/or what their supervisor instructs them to do (e.g., we’ve had Examiners tell us that they were told to maintain the rejection, but weren’t quite sure why). Examiners may jump right into the “something more” analysis, because articulating what the abstract idea is can be a difficult task (see Amdocs explaining that there is no definition for abstract idea, and there can’t be a definition). So difficult, in fact, many courts, including the Federal Circuit, punt on the issue. DDR did this, noting that abstract ideas are hard to put your finger on, but skipped forward, because they cleared the claims under step 2 (something more). This is an opportunity, however, to get a 101 rejection withdrawn. Call the Examiner out on not articulating the abstract idea, as required by the guidelines (citing to the guidelines), and tell the Examiner to either do what is required, or withdraw the rejection. I have had at least two rejections withdrawn in the last few months doing exactly that.

Q: “Apparently TC2100 received training yesterday on Apple v. Ameranth, and have been told that GUI may now be abstract. Can you comment?”

A: I can’t comment specifically on the Apple case, but I can say that the claims at issue there seem fundamentally different than GUI claims in other cases, where patent-eligibility has been found. A good example is Example 23, claims 1 and 4 of the July 2015 Update (link, scroll to PDF page 7). If you have a GUI claim that you can parallel to this example, you will likely be successful avoiding/overcoming a 101 rejection at the USPTO (I’ve successfully used this in two applications).

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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Ryan P. McCarthy | Principal

Ryan is the chief representative of the Shenzhen, China, representative office of Fish & Richardson P.C. Ryan’s practice emphasizes patent prosecution, litigation support, opinion work, IP due diligence, IP strategy, portfolio management, agreements and licensing. Now in China, and having lived and worked in Munich, Germany, prosecuting...