Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations).  Patent applications are also facing similar challenge, with some claims being rejected during examination by the United States Patent and Trademark Office (USPTO), as allegedly directed to patent-ineligible subject matter per the above.  What can we, as patent practitioners, do during patent prosecution, to argue for patent claim subject matter eligibility, when faced with such a rejection?

There is an advantage we can make use of during patent prosecution.  One excellent article, “Are Questions of Fact Being Overlooked in Software Cases?”  by Alexander Hadjis analyzes recent appellate decisions, dispositive motions at the onset of litigation, and dismissals of patents based on assertion of patent claims having patent-ineligible subject matter.  This provides us with some clues as to differences between the litigation environment and the patent prosecution environment.  According to the analysis in that article, such dismissals of patents early during litigation proceedings do not rely on formal claims construction before a jury and do not rely on analysis of claims under the obviousness doctrine, particularly regarding scope and content of prior art, level of ordinary skill in the pertinent art, differences between the claimed invention in prior art and other objective evidence.  In other words, such dismissal of a patent during litigation does not require analysis of the claims under 35 USC §102 and §103.

But, fortunately for patent prosecution, the USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, issued December 16, 2014, recommends (on pages 25-26):

II.  Complete Examination

Regardless of whether a rejection under 35 U.S.C. 101 is made, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting.

So, during patent prosecution (for the near term, anyway) we should expect that any rejection of claims as allegedly directed to patent-ineligible subject matter, under 35 USC §101 judicial exceptions including abstract ideas, will also be accompanied by cited references and Examiner analysis of claims under 35 USC §102 and/or 35 USC §103, in an Office Action.  This provides us with the advantage, as compared to the above-discussed litigation environment, of having (usually) other patents or patent application publications with specifications and claims to which the present claims under examination can be compared as to scope.

Assuming we can convincingly argue that the present claims are neither anticipated (under 35 USC §102) by nor obvious (under 35 USC §103) over the reference(s) cited in the Office Action (this is part of our usual job during patent examination, as patent practitioners), we may then have additional material to bolster arguments relative to 35 USC §101.  For example, one line of inquiry to pursue is to determine whether the cited references are in some other way related to the abstract idea that the Examiner is citing during the §101 rejection (in which the present claims are alleged to be directed to an abstract idea).  If the present claims can be shown different from the cited references, per the §102 and/or §103 analysis, then it could be argued that the present claims constitute more than just a collection of computer components, the abstract idea, and the instruction to “apply it” (per Alice).  In the language of Alice, the present claims could then be shown to be inventive over both the cited art and the abstract idea, because of this difference in scope as compared to the cited art under §102 and/or §103.

Another line of inquiry to pursue is to determine whether the present claims attempt to preempt all possible uses of the abstract idea (per Alice), or in the language of the USPTO Interim Guidance (cited above, and see page 25) “attempt to tie up use of the mathematical relationships”.  If the Office Action cited art shows some other use of the abstract idea or the mathematical relationship, and particularly when (as above) there is a difference between the present claims and the cited art under the §102 and/or §103 analysis, it could be argued that this is a factual finding showing that the present claims do not preempt all possible uses of the abstract idea or tie up the use of the mathematical relationships.

Of course, these lines of inquiry and analysis should be tailored to the specifics of the claims being examined during patent prosecution.  Variations of the above and other lines of inquiry relating toAlice and the USPTO Interim Guidance can be developed.  The key leverage to apply during patent prosecution, is that cited references, §102 or §103 analysis, claims construction, and claims scope analysis and comparison are available for factual findings in answer to a §101 “abstract idea” rejection.  Having such arguments, and factual findings, available in the patent prosecution history, may even be of benefit later on if a patent is challenged in the courts.  This is all part of the art of patenting.