Examiners Begin Issuing Alice Rejections for Software

By Gene Quinn
July 14, 2014

A friend who handles large numbers of software patent applications for some of the most elite technology companies sent me an e-mail late last week about what he has already started seeing coming from patent examiners. He says he has seen the below form paragraph twice within a week. Most alarming, in one case the form paragraph came in the form of a supplemental office action, but the outstanding original office action didn’t have any patent eligibility rejections under 35 U.S.C. 101.

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… [This] is considered a method of organizing human activities, therefore the claims are drawn to an 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, claims… are directed to non-statutory subject matter.

Did you notice the circular logic? The claims are abstract because the claims do not recite limitations significantly more than an abstract idea. Truthfully, this rather ridiculous logical construct can’t be blamed on patent examiners when the Supreme Court refuses to provide a definition for what is an abstract idea.

Did you also notice the mention that the claims require no more than a generic computer? Does that mean that software that operates across platforms is not patentable because it operates across platforms and on any number of different machines? Must it work on only a single machine? It would be rather idiotic for software to be patent ineligible for cross platform operability when that is one of the most powerful and sought after features of software. I have been critical of the general computer versus specific computer construct for just this reason for years. Truthfully, the nonsense about general and specific purpose computers is a distinction without a difference created by those who really don’t understand software, or computers.

Aside from the substance of the rejection, the larger concern is that if patent examiners are issuing Alice rejections in office actions where no previous patent eligibility rejection existed things are indeed very different post decision. There is no doubt that in the mind of the Patent Office, or at least some examiners, Alice has dramatically changed the playing field. How else could you explain no 101 rejection at all before Alice is decided and a supplemental office action sent in the early aftermath?


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Clearly this form paragraph does not come from the initial guidance the USPTO sent to examiners. In that initial guidance Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, told patent examiners that “the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, USPTO told patent examiners that while the framework of the analysis had changed the substance of the analysis had not changed. So where then did this form paragraph come from? If the substance hadn’t changed why would there be a supplemental office action issued in a case where there was no 101 rejection previously?

With multiple patent examiners in different cases using the above form paragraph we have to acknowledged that it had to come from somewhere. This deviation from the initial guidance to patent examiners is alarming, as is the fact that the USPTO after issuing the initial guidance seemed to get blow back from somewhere and is asking for comments on their initial interpretation of the meaning of Alice v. CLS Bank. This is highly unusual in the case of quick, initial guidance. They are doing it under the guise of allowing further comment on the Mayo/Myriad guidelines, but the recently published notice quite clearly explains:

The United States Patent and Trademark Office (USPTO) has issued preliminary instructions on Alice Corp. to the patent examining corps and these preliminary instructions have been posted on the USPTO’s Internet Web site. The USPTO is inviting public comment on the Alice Corp. preliminary instructions.

(emphasis added).

I suspect that the Obama Administration, which has been taking its guidance on patent issues from Google, must have been uncomfortable with the “nothing has changed” approach the USPTO career officials wanted to take.

Many thought my initial reaction to the Supreme Court decision in Alice was incorrect and too pessimistic. As more and more rejections filter through to patent applicants, and as we start to see decisions from district courts start to come in, I suspect my view of the way the decision will be interpreted will be far more accurate than those who said that the decision didn’t present any problems whatsoever. Time will tell, I continue to hope I’m wrong, but things seem to be taking a turn for the worse already.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 26 Comments comments.

  1. Anon July 14, 2014 12:17 pm

    Dare I say, “Patent (to) pieces in our day”…?

    (playing on a spin of lower case “anon” and a historical reference to a government figure celebrating the taking of a tough stance which later is shown to be an abdication of responsibility with devastating consequences)

  2. NWPA July 14, 2014 1:47 pm

    This is Lee’s big pay day. Google will give her at least $10 million for this.

  3. NWPA July 14, 2014 1:50 pm

    This is really a technology test like the EPO has. Note too that the language “a method of organizing human activities” is from the concurring opinion that stated that patents were not meant for the above quote.

    So, in other words, Lee is implementing Stevens dissent in Bilski. Google bought this rejection. I wonder how much Obama made them pay for Lee. I’d guess at least $50 million in campaign contributions to the Democrats.

  4. NWPA July 14, 2014 1:53 pm

    This language is notable too: “The limitations are merely instructions to implement the abstract idea on a computer”. By the Church-Turing Thesis then a method on a general purpose computer that performs the function of a Supreme Court Justice is not patent eligible. How does it make sense to say that a machine that is performing the information processing that a human does now (and is so valued) is not eligible for patentability?

    That is complete nonsense and evinces complete ignorance of the information processing arts. Also, I’d note that the method could be on a special purpose chip. So, they are the form over function. Note that all (almost) EE could be claimed on a general purpose circuit implementer.

  5. NWPA July 14, 2014 1:56 pm

    I spoke to an examiner the other day about this, by the way. He said he was told by superiors that all software is going to be rejected unless it improves the performance, involves a new technology, or involves a technology outside the computer. So, they are saying if it can be put into the memory to be executed and isn’t expressly for improving the performance of the computer, then it is not eligible.

  6. American Cowboy July 14, 2014 1:56 pm

    You know, it becomes a bit of a catch-2:. Things that happen in nature are not patentable; you have to have some human act of invention. But a method of organizing human activities ain’t getting no patent, neither.

  7. patent leather July 14, 2014 1:58 pm

    The USPTO is now going to “over-apply” the abstract idea exception. What we need is a good case to go to the supremes (possibly Ultramercial although there are better cases) that is not tied to an “economic principle” so hopefully the “abstract idea” doctrine is finally limited.

    Abstract ideas were flagged at the USPTO and handled appropriately before Alice. For a good example of a REAL abstract idea, see 20050282140. The examiner even writes in the final rejection, “Examiner sincerely hopes that Applicant will file an express abandonment in this case upon reviewing this office action.” Normally I would say any examiner who writes that to an applicant should lose his job, but based on these claims the examiner actually gave this case a thorough examination and should be commended.

  8. NWPA July 14, 2014 2:03 pm

    #6 What we need is a good case to go to the supremes (possibly Ultramercial although there are better cases)

    In my view, what we need is to get rid of the dirt bag Lee. I’d bet anything that she will be slinking out to Google to collect her $10 million once Obama is out of office. I’d also bet that she could give a rat’s a$$ about the law. She should be removed by Congress.

  9. Steve July 14, 2014 3:07 pm

    Does anyone have a suggestion of how best to traverse 101 rejections such as these?

  10. American Cowboy July 14, 2014 3:14 pm

    Steve, add an extra element to the claim that has nothing to do with processes or computers; maybe a wheelbarrow or a capacitor.

  11. Gene Quinn July 14, 2014 4:07 pm

    Steve-

    It will be a challenge to overcome these types of rejections in many applications that were filed prior to Alice so substantially changing the law. There seem to be two keys. First, the process cannot work on a general computer, but rather it needs to work on a specific machine. So consider using the old style machine claims from the 1970s and lose any discussion of the process being capable of being used across platforms and on different machines. Second, the process needs to make something tangible work differently or operate in a different environment. So graphical user interfaces may be OK.

    -Gene

  12. NWPA July 14, 2014 5:33 pm

    One suggestion is to read types on how to prosecute software at the EPO. There are various papers around for this. One thing that is odd, is that most wireless software is not challenged at the EPO because it is making more efficient use of the antenna. Weird.

  13. step back July 14, 2014 5:58 pm

    To All:

    PTO rejecting claims for totally bogus reasons?

    What’s new with that?

    The situation is normal as usual: SNAFU.

  14. American Cowboy July 14, 2014 6:11 pm

    NWPA, using Scotus’ thinking that since computers per se aren’t new, adding an antenna, which is also not new, would not get you to the promised land, either.

  15. angry_dude July 14, 2014 9:29 pm

    NWPA:
    “…he was told by superiors that all software is going to be rejected unless it improves the performance, involves a new technology, or involves a technology outside the computer.”

    Well, how about all those existing zillions of presumably valid “software” patents on speech/audio/picture/video compression/transmission/recognition etc etc
    Are they going to question patent holders on how their patenst improve “performance” ? and which “performance” btw ?
    is it speed or memory or both, and on which type of computing architecture – sequential or massively parallel ?

    Those people are idiots. Period.

  16. patent leather July 14, 2014 9:32 pm

    I spoke to an examiner today in the software unit about this and he told me that there’s really no significant change. Business methods are out but otherwise he said I shouldn’t worry.

    I guess it all depends on who you ask and what unit they’re in.

  17. Anon July 14, 2014 10:50 pm

    patent leather,

    Business methods are out? I thought the Stevens’ faction lost ground, going from four votes to three votes.

  18. NWPA July 15, 2014 1:56 am

    14: American Cowboy:

    The antenna isn’t new. It comes under the classification of improving the performance of the “hardware” or communication bandwidth.

  19. Gene July 15, 2014 7:36 am

    “Does that mean that software that operates across platforms is not patentable because it operates across platforms and on any number of different machines?”

    uh, no.

    great journalism, though. no claim language that is at issue. but the the sky is falling anyway.

  20. Benny July 15, 2014 8:37 am

    Patent leather at 7,
    Thanks for bringing patent application 10/869082 to my attention – I found it funny. I think you should have quoted the examiners’ remarks more fully, though – He actually wrote “Will you continue to tie up resources that could be spent examining cases that might issue, or will you file what will essentially be a frivolous appeal?”

  21. wow July 15, 2014 5:31 pm

    Gene,

    you are not wrong or being overly-pessimistic, the government is destroying IP I suspect its because large companies are losing the patent war to smaller innovators.

  22. Joachim Martillo July 16, 2014 12:18 pm

    If the form paragraph were applied to the concept of hedging, it makes sense. If the paragraph were applied to the concept of packet switching, it would not. The Supreme Court is having difficulty in capturing the distinction between the two activities, and the unfortunate situation makes it possible for patent examiners to run amok.

  23. Mark Nowotarski July 18, 2014 4:28 pm

    Does anyone have a suggestion of how best to traverse 101 rejections such as these?

    Steve @ 9

    Patience.

    Let the office sort it out. Watch for what still gets issued in class 705 (business methods) starting in September (allowances today will issue about then) and keep an eye on PTAB reversals that cite Alice. Both will will help you with the language you need in your responses.

    This strategy was effective following KSR when the office had to adjust to a new and less well defined obviousness standard.

  24. Mark Nowotarski July 18, 2014 4:35 pm

    Gene,

    How up to date is PatentAdvisor? A key word search on “considered a method for organizing human activities” might be very useful. I Googled the phrase for the USPTO web site and came up with nothing.

    By the way, if examiners have been issued guidance instructing them to use this form paragraph, isn’t the Office obligated to inform the public?

  25. Inside informant July 22, 2014 8:54 pm

    Two things:

    1. the FP was issued by mngmt. What specific individual or what specific group of people that are specifically is behind it is anyone’s guess. If I had to take a wild guess I’d say most senior staff and the legal dept were involved at least a bit. Though to me they have the law more or less right now.
    2. no they are not obligated to inform the public Mark. in fact, there are arguably “policies” against that. It is not mere “guidance” or a “guidance document” being issued. It is “internal operations”, the rough equivalent of them going office to office telling examiners explicitly what to do. But I’m sure it will be added to the MPEP shortly so simmer down.

  26. Mark Nowotarski July 22, 2014 9:40 pm

    thanks for the update

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