Author: Christopher C. Johns
Editor: Adriana L. Burgy
The Alice Corp. decision and its progeny have been wreaking havoc at the USPTO. In addition to increasing costs, it has cast a shadow on our patent system. Innovators are seemingly unable to get patents without jumping through the ill‑defined “abstract idea/significantly more” hoop. Worse still, if your application ends up classified as a Business Method application, you could face a never‑ending string of § 101 rejections for the time being. Clearly, new approaches are needed to get past perfunctory rejections that dismiss claims as mere abstractions.
Rejections under § 101 generally contain a statement about what “abstract idea” the claims represent, along with a statement that any “additional elements” do not constitute “significantly more” than that idea. It’s quite difficult to get over this first hurdle. The Interim Eligibility Guidance from July asserts that abstract ideas “need not be old or long‑prevalent.” Combined with the Supreme Court’s statement in Alice Corp. v. CLS Bank, 134 S.Ct. 2347, 2354 (2014), that “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” it is clear that the USPTO considers very few claims to not include some abstract idea.
At first glance, the “significantly more” inquiry seems like a great place to start a response. In at least the Business Method art units of the USPTO, examiners have received guidance that passing the “significantly more” inquiry is the easiest way to get claims allowed. Based on recently issued patents, it is clear that elements that can only be implemented on computers or electronic devices help to distinguish the claims from mere abstract ideas. Particular user interfaces and “hardware‑implemented” devices are good first targets. But sometimes user interfaces, hardware, and even elements drawn directly from the USPTO’s Examples or DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014) are not enough. Many examiners will continue to assert that a claim is abstract, and simply dismiss any technological elements as “generic” or “known.” This vagueness, however, can be to your advantage.
For example, to make a prima facie case of ineligibility, the examiner has to consider the claims both as an ordered combination and individually. See, e.g., Ex parte Poisson, Appeal No. 2012-011084 (PTAB Feb. 26, 2015). To make a proper rejection under 35 U.S.C. § 132, the examiner must also include “information . . . as may be useful in judging the propriety of continuing the prosecution of [an] application,” i.e., pointing out which claim elements constitute the abstract idea and which claim elements constitute the non-significantly more elements. Most of the abstract idea rejections from the USPTO do not include any discussion about claim elements.
So, request an interview with the examiner to get clarification as to which elements are abstract. In your next response, argue that the technological elements of the claims are outside of that abstract idea. This will force the examiner to more clearly explain the rejection, which will prepare your application for appeal or – better yet – result in the withdrawal of the rejection.
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