Arguing Alice- Down the Rabbit Hole, Carl Reed

1. © 2016 Workman | Nydegger
ARGUING ALICE
Down the Rabbit Hole
Strategies for Responding to
Rejections Under 35 U.S.C. § 101

2. About UsDefining the Undefinable
• Justice Thomas
– “We need not labor to delimit the precise
contours of the ‘abstract ideas’ category in this
case”
– Reminiscent of the “I know it when I see it” test
for obscenity
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Alice is a fact-free
way to reject any
claim I want! I
know an abstract
idea when I see
one!

4. About UsSignificantly More
• The problems with Alice include the problem of
comparison and the subjective nature of the
analysis.
– The claim elements are significantly more compared to what and
from who’s perspective?
• General approach for your comparison and as an
objective (from our viewpoint) approach.
– Teachings of the cited art
– Technical Problems
– Identify Improvements (Software can be an improvement)
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Comment Regarding a Generic Computer
• The recitation of a generic computer in a claim does not make a
claim patent ineligible. Adding a generic computer to a claim
that is directed to a judicial exception results in a claim that is
still patent ineligible.
• If the § 101 rejection is based solely on the fact that the claim
recites (among other elements) a generic computer, then Alice
has not been applied correctly.
• In effect, it may be possible to render a generic computer a
special purpose computer in the context of your claim elements.
– Consider arguing your claim recites a special purpose
computer when considering the claim as a whole.
– Provide support when drafting for a special purpose
computer

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Do Alice, Mayo and Bilski Preempt Individual
Arguments?
• The words “apply it” is not enough for patent
eligibility (e.g., implement an abstract idea on a
computer).
– Does this preclude a “practical application” of an
abstract idea? Perhaps, but not a novel and
non-obvious practical application.
• Limiting to a technological environment may not be
enough for patent eligibility.
• Argue the “significantly more” and use, when
possible, more than one argument. Present a
cumulative effect.
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§101 Examination
Process
• The Examiner still provides
an analysis under §§ 102,103
– Use this analysis to your
advantage in identifying
“significantly more”.

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Prima Facie Case
• Is claim directed to machine, process, manufacture, or composition of
matter?
• Did the Examiner identify an abstract idea or a judicial exception?
• Did the Examiner provide “a reasoned rationale”:
– Clearly articulate reasons why the claimed invention is not patent
eligible?
• Rational may be based on (July 2015 Update: Subject Matter Eligibility):
– Knowledge generally available to those in the art
– Case law precedent
– Applicant’s Disclosure
– Evidence
– Address all elements in the claim and explain why they are not
significantly more than the judicial exception (July 2015 Update: Subject
Matter Eligibility)
• MPEP 2106 – “if a claim is directed to a judicial exception, it must be analyzed to
determine whether the elements of the claim, considered 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”
• Does the claim set forth the “inventive concept”?

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Argument #1 – Attack Prima Facie Case
• Did the Examiner merely state an opinion?
– E.g., - is only the “abstract idea” identified in the Office Action?
• No “reasoned rationale”
• Is the Reasoned Rational Adequate
– Evaluate the Reasoned rationale – conclusory, repetition of claim language? Where
are the reasons? If the elements of the claim are parroted in the Office Action –
can a “hindsight” analysis be presented in a 101 context?
• Is the “abstract idea” identified by the Examiner what the claim is directed to?
– “Directed to” means the exception is recited in the claim – the claims sets forth or
describes the exception. Part 1.A.1 of the Interim Eligibility Guidance
– Is this evidence the Examiner has not considered all elements of the claim as a
whole?

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Argument #2 – Demonstrate Significantly More
• Argue that claims set forth a “practical application of an abstract idea”
• Demonstrate that the “significantly more” in the claim is not “well
known in the art”
– Apply an analysis of the art rejections into the 101 analysis
• Argue individual elements of claim and collective elements of claim
– Did Examiner address all elements of the claim?
– Unaddressed elements may constitute significantly more
• Argue an improvement to a technical field or solution to a problem
– A method for backing up data with a backup server
• Abstract idea – copying data and storing data
• Response – Claim overcomes technological problem of backing up data from a cloud
environment to another cloud environment
• Argue that limitations link or tie the abstract idea to a technological
environment –
– Evaluate the strength of the link in the claim and amend if necessary

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Significantly More
• Improvements to a technical field
• Improvements to the functioning of the computer
• Tied to a particular machine
• Transformation
• Add an element that is not known (not well-
understood or routine)
• Add unconventional steps
• Link claim to a specific technology or field
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Argument #3 – All Applications of the idea not
Preempted
• 2015 Guidelines – “The absence of complete preemption
does not guarantee that a claim is eligible”. See example
8.
• Diehr – solve a technological problem of curing rubber and
involved a mathematical formula
• Field of use argument or limiting to a particular field may not
be enough
– If the claim preempts all use in the particular field, the claim may not be patent eligible
(Diehr).
• It seems better to argue that the claim is a practical application
rather than restricted to a particular field of use.

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Argument #4 – Show Similarity to Examples in
PTO Guidelines or Case Law
• The abstract idea in Diehr was identified as a well-
known mathematical equation
– Significantly more included:
• Input data
• Repeatedly perform a calculation based on the
data
• Not sure why these elements are not routine
elements

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Argument #5 – Distinguishing Elements
• Point-of-Novelty Test (dead?) – so cast argument in terms of
significantly more beyond the abstract idea – use the language unique
to § 101.
– What constitutes a meaningful limitation or significantly more?
• Evaluate Art Rejections
– A claim allowable over the art is different or narrower that the art and
this reflects that the claim does not try to preempt all use of the abstract
idea in the field and that the claim is also distinct.
– Demonstrate a difference in scope between the claims and the prior art
– If claims are different from the cited art, then the claims include
elements that constitute “significantly more” than the abstract idea and
more than the instruction to “apply it”.

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Argument #6 – M-O-T Test
• Include machine in the body of the claim.
– Tie the elements of the claim to an apparatus or machine
– A preamble can set the stage for arguing patent eligibility (e.g. by setting
forth a environment that is not abstract or that can be used to argue that
the claim is not abstract)
– The claims should reflect the structure of the environment
• Bad – A method comprising… collecting data … storing data…
• Better (not great) – A method comprising… collecting data from a server
computer over a network… storing the data in a container instantiated on a
storage device…

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Argument #7 – Redefine Abstract Idea?
• Don’t let the Examiner define the abstract idea too narrowly
– Ex Parte Cote (Held Invalid)
• “A method of using clusters in electronic design automation, the method
comprising:
– receiving data for a plurality of bins, each bin including a plurality of clusters, each cluster representing a
plurality of shapes in an original layout, the plurality of shapes having a proximity to each other determined by
a grow operation; and
– using a computer, preparing a phase shifting layout for the original layout represent a plurality of shapes
having a proximity to each other determined by a grow operation.”
• The abstract idea identified by the examiner was essentially the entire claim:
“independently phase shifting each of a plurality of clusters which each represent a
plurality of shapes having a proximity to each other by a grow operation”
• If definition is too narrow, what is left in the claim? What can the “significantly more”
be?
– If abstract idea is not easily identifiable, is it really abstract? (DDR Holdings)
• Holding not based on these grounds, but they were mentioned.
– Is the identifiable abstract idea comparable to recognized abstract ideas?

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Final Comments
• If you don’t know what the is thinking – Interview?
– You may be able to convince the Examiner without 101 specific
amendments
– But you may want to amend anyway in light of the way courts
treat these applications
• Amend and strengthen claim without sacrificing scope?
– Consider adding structure
• Courts seem to be requiring an “inventive concept”
approach
– This approach seems to mix §§ 101, 102, and 103
• Argue patentability of the claims using 101 language