Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

By Andrew Gabriel
February 17, 2017

The Federal Circuit employed a common-law approach to determine what qualifies as patent eligible subject matter in Amdocs (Israel) Limited v. Openet Telecom, Inc., 2015-1180 (Fed. Cir. 2016). As some may recall, to deal with the difficult problem of identifying claims that are directed to a judicial exception (e.g., an abstract idea), and thus are not patentable, the court indicated that it is appropriate to begin with “an examination of eligible and ineligible claims of a similar nature from past cases.”  Slip Op. at 12.  “With this background in mind,” the court turned to evaluation of the claims under 35 U.S.C. § 101, finding them to be patent eligible. Id at 19.

This approach basically conforms to the technique established for the Patent Examining Corps by the USPTO, for example as laid out by Deputy Commissioner Bahr in May, 2016.  The practice of establishing subject matter eligibility at the USPTO examination stage has become one in which a practitioner often needs to rebut a comparison to a patent ineligible example, made by the patent examiner, by arguing that the claims at issue are more akin to one of the patent-eligible examples in the case law, the USPTO examples, or both.

Taking a hint from what has worked before can give patent prosecutors an advantage.  Unfortunately, as those familiar with the Federal Circuit cases, district court cases, and USPTO examples on this topic can attest, there are precious few positive examples to grasp onto, making it somewhat difficult to make a comparison that is convincing.  If the approach to overcoming a rejection based on subject matter ineligibility is to analogize to a similar case that has received positive treatment, surely a case approved by the same examiner, supervisor or art unit that is handling a given application would be a great example to learn from. Even if no such example is readily available, finding other relevant cases that have been recently approved by the USPTO at the prosecution stage can be beneficial, especially if your case does not neatly fit into any of the fact patterns from the case law or USPTO examples.  The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections.

Source documents (office actions and applicants’ responses) for past cases are available on Public PAIR. However, Public PAIR is not an optimal search tool for identifying cases in which an Alice v. CLS Bank rejection has been overcome.  Luckily, finding such prosecution cases is less burdensome than in the past.  There are services such as PatentAdvisorTM that makes this information (and much more) available based on analysis of publicly available data. The service provides advanced searching capabilities and therefore makes possible targeted searching for cases involving an Alice v. CLS Bank rejection, and thereafter identifying positive examples in which applicants have successfully overcome these rejections at the USPTO.

Additionally, a free interface is provided by the USPTO that may be used to pull up cases that have successfully passed muster under Alice v. CLS Bank, although some insight may be necessary for searching the data to produce useful results.  As set forth in a Department of Commerce post last march, the USPTO has created a tool that permits users to retrieve bibliographic data using hooks such as art unit and date range (and many others).  This tool, termed “PAIR Bulk Data,” is a quick way to become familiar with successful patent activity within a given art unit, as that search parameter has been added to the conventional patent search tool offered by the USPTO.  Therefore, one may quickly identify what patents have been issued or allowed by an art unit of interest for a particular date range.

Those having cases sorted into art units in technology center 3600, particularly finance and insurance art units, are aware that there generally have been fewer patents that have issued since 2014, largely because of heavy application of Alice v. CLS Bank rejections in these areas.  While this is undoubtedly frustrating to applicants, it also makes it easy to find patents that have successfully overcome Alice v. CLS Bank rejections by looking for cases issuing from these specific art units.  As just one example, patents that have issued from art units such as 3692 over the past year are likely to have encountered an Alice v. CLS Bank rejection.  Once identified in PAIR Bulk Data, the file wrappers of these cases may be retrieved from Public PAIR, which yields source information about how the applicants successfully addressed or avoided these rejections.  More digging may be required to use PAIR Bulk Data to find relevant cases for other art units because Alice v. CLS Bank rejections tend to be clustered in certain areas.

It is an excellent bet, however, that given an appropriate choice of art unit, consulting the image file wrapper of the resultant issued cases will yield some insights into how or why an Alice v. CLS Bank rejection was avoided entirely or overcome once presented.  For example, searching for an art unit (e.g., 3692) and issue dates (e.g., 1/1/2016 through 12/31/2016) yields bibliographic data for cases that have issued from that art unit during that time frame. Other search criteria may be used, e.g., a status of “allowance” in a given time frame.  Searching on these constraints yields a manageable number of results from many art units that are particularly active in terms of § 101 rejections.  The titles of these cases can be quickly scanned for relevance to a case of interest.  While not all cases pulled from such art units will have had an Alice v. CLS Bank rejection, undoubtedly some cases will include specific claim limitations and arguments that have been successful in overcoming an Alice v. CLS Bank rejection. This list of cases may provide examples that are more topically relevant and more recent than many of the case law and USPTO examples. In addition, the Office Actions in such cases demonstrate how the examiners are currently applying the case law and USPTO examples to other applicants’ claims.

Naturally, if a case of interest is in the same art unit or even handled by the same examiner as the examples you consult, such examples will give real insight into what types of claims are likely to be successful.  For those having applications typically sorted outside of 3600, looking into the 3600 cases can nonetheless be important for a variety of reasons.  Based on the number of Alice v. CLS Bank rejections, it can be said that the 3600 art units are the front line in terms of the USPTO’s efforts to implement an examination procedure that addresses the Alice v. CLS Bank decision and its progeny.  Looking into what is occurring within these art units can give some perspective as to what trends are being set by these groups, offering lessons than can be extended to other technology areas.

Using data available in Public PAIR, identified initially using the PAIR Bulk Data tool or another service, is a quick way to become familiar with the current status of case handling in art units that frequently apply Alice v. CLS Bank rejections.  If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.

The Author

Andrew Gabriel

Andrew Gabriel is the head of the intellectual property practice at CFWW+S. Andy is a patent attorney with experience obtaining patents for clients predominantly in the tech sector.  Andy obtained his law degree from the University of Pittsburgh. Prior to law school, Andy studied at the Pennsylvania State University, College of Medicine, and completed a Master’s degree. Andy’s undergraduate education was completed at the Pennsylvania State University, where he graduated with a B.A. in History and a B.S. in Biology.

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 2 Comments comments. Join the discussion.

  1. Paul Cole February 17, 2017 10:25 am

    Deciding future cases by identifying the essential facts found in past cases and then identifying the essential rule of law based on those facts is what is to be expected of a trained lawyer. Deciding future cases based simply on the factual outcomes of past cases is unworthy of a student who has completed his or her first year at law school.

    Here is the failing first-year law student syllogism for Myriad (Justice Scalia liked syllogisms):

    Isolated BRCA1 is patent ineligible
    BRCA1 was isolated from a naturally occurring sequence
    Every isolated naturally occurring sequence is therefore ineligible.

    Those of us with an interest in logic will detect more than a whiff of the undistributed middle fallacy.

    Admittedly, though, the USPTO handles cases in bulk and considering what has been granted in the past may represent a good way forward. Effective legal analysis and intelligent application of the relevant rules of law is unfortunately not a lead attribute of the USPTO at the mement.

  2. Mark Nowotarski February 18, 2017 12:45 pm

    I have been using PatentAdvisor to great effect to see not only what an examiner or art unit is saying “yes” to but “no” as well. This is especially helpful at the stage of drafting an application. I do a preliminary classification, identify the relevant art unit, and make sure sure that what I’m claiming is close to what they are saying yes to and far from what they are saying no to.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website