A Realistic Perspective on post-Alice Software Patent Eligibility

By Babak Nouri
October 14, 2018

Alice fallingIn the wonderland of Alice, all patent ineligible software inventions are technically abstract in the same way. Each patent eligible software invention is technically specific in its own way.

Much of the havoc wrought in the software patent system by the landmark decision Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) stems from the unworkable two-part patent eligibility test based on vaguely defined and nebulous Abstract idea and significantly more constructs. The High court’s reluctance or perhaps inability to precisely define these standards and the perceived lack of discernible consistency by the patent community in the way these standards have been applied in the compendious jumble of case law, has perpetuated a sense of uncertainty. This has prompted many to cast a grim prospect for the software patent industry.

Judicial attempts at clarification have further muddied the water by resulting in a myriad of definitional categories for the Abstract idea construct and attachment of multiple supplemental inquiries to the base Alice inquiry. This has further complicated and confounded the patent eligibility question. The Alice legal framework may work as a rhetorical construct to maintain consistency of expression in legal precedents, but given its undefinable parameters, it is bereft of any analytical value for guiding drafting and prosecution strategies. It is time for a pragmatic shift in perspective.

To shed light on the post-Alice legal analysis of software patent eligibility, it may be helpful to shift focus from the vague rhetorical articulation of the Alice framework to the clear judicial objective underlying its construction. That is, ensuring that the technical scope of the software claim is offset by the technological contribution of the invention. This may be achieved, for example, through a modified claim construction in light of the specification for the purpose of the patent eligibility inquiry. The recent Court of Appeals for the Federal Circuit (“CAFC”) issued rulings confirming the indispensable role of the specification in informing the patent eligibility inquiry, lends credence to this view of the problem. From this vantage point, a cohesive vision of software patent eligibility emerges from the post-Alice chaotic landscape.

Reviewing a representative sample of patent-eligible software cases, including DDR Holdings, LLC v. Hotels.com, L.P., No.13-1505 (Fed. Cir. Dec. 5, 2014), Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016) and Trading Technologies Int’l v. CQG, No. 2016-2016 (Fed. Cir. Jan. 18, 2017), reveals that the claims at issue in each application recite a distinctive technical feature(s) that underpin what the corresponding specification describes as merits and advantages of the invention (technological contribution). In DDR, it was the step of redirecting visitors clicking on an ad link to a generated hybrid website that combined visual elements of the host site with vendor product information. In Trading Technologies Int’l, it was displaying real-time price fluctuations as dynamically shifting indictors along a static price index. In Enfish, it was a self-referential database model where column definitions were provided by the rows such that different data entities could be stored and indexed in a single table. Every software application that has cleared the Alice eligibility barrier has included a claimed technical feature relating to the technical implementation, structure, configuration or arrangement of the invention that defined or circumscribed the technical scope of the invention – in addition to a specification that clearly communicated the associated technological contribution in terms of improvements in functionality, performance or desired outcome. This blueprint has proven to have merit in overcoming the Alice obstacle.

Conversely, every software application found ineligible under Alice, has had an undefined technical scope with the specific claimed invention defined only in terms of functionality. The claimed inventions in Ultramercial, Inc v. Hulu, LLC, No. 10-1544 (Fed. Cir. Nov. 14, 2014) and TLI Communications, LLC v. AV Automotive, LLC, No. 15-1372 (Fed. Cir. May 17, 2016) were functionally specific, reciting many steps, both offered novel functionality and commercial utility. However, the respective claims of both inventions merely stipulated the end result/effect in each recited step, lacking any details as to the “Technological How” of achieving the recited effect/result. Technically abstract inventions (having an undefined technical scope) are regarded as preempting all known and unknown technical implementations (embodiments) of the recited effect and bare the hallmark of patent ineligibility under Alice.

In a patent eligibility landscape riddled with Alice-based rejections and invalidation it behooves patent practitioner and applicants alike to appreciate that not every innovation that achieves “a new, useful, and tangible result” is patentable. For example, a computer-implemented innovation involving an inventive and non-obvious business concept/method is not likely to be a successful patent if the novelty merely lies in the business method and not the technology of implementing it. This is supported, for example, by the finding in Ultramercial, Inc. Although this does not exclude inventions that address business methods from patent eligibility, it does restrict patent eligibility of such inventions to ones that disclose and describe a technical solution to the purported business challenge. Examples of successful implementation of this approach may be seen in DDR, and Trading Technologies Int’l, both of which were directed to improved software-implemented methods of conducting business.

Post-Alice patent-eligibility analysis exalts substance over form. The Supreme Court’s repeated explicit warnings against findings of eligibility based on “draftsman’s art” has induced, in lower courts and patent examiners alike, a level of hyper-vigilance towards drafting efforts designed to disguise an abstract idea as eligible subject matter. As a result, remedial drafting notions such as padding the functional language of the claim with generic hardware recitations or merely obscuring the specification with generic technical details have been demonstrably ineffective. In fact, such practices may potentially result in more harm than good by actually triggering an Alice review.

It is now more imperative than ever for practitioners to probe inventors with the right set of questions directed at identifying any distinctive technical features in the implementation, structure, configuration or arrangement of the software invention. These aspects must be explicitly recited in the claims to provide immunity against an abstract idea characterization or to serve as the inventive concept. Although this step is critical, to leave matters here is to simply rely upon the technical acumen of an examiner or a judge to discern from the claim language the distinctive technical character and contribution of the invention. This is obviously unwise. Therefore, as an essential safeguard, these aspects must be clearly communicated in the specification. Characterize the problem the invention is addressing and clearly describe technically distinctive aspects of the invention (structural, implementational, configurational, and arrangemental) and any resulting advantages and improvements in performance or functionality with respect to what has come before. Selective use of vague language and loose characterizations meant to describe the invention with a degree of interpretive latitude should be weighed in the drafting process. Specifically claiming the key technical features underlying the described improvements and tying the asserted advantages and improvement in the specification to the language of the claim has always been good practice. The result is both a good application and one that is likely to survive an Alice review.

The Author

Babak Nouri

Babak Nouri is a Patent Agent with Polsinelli, where he prepared and prosecuted numerous patent applications, particularly in the software, electrical, and mechanical arts. Additionally, Babak is well-versed in drafting and prosecution strategies for overcoming Alice-based obstacles in fields of software-implemented inventions, medical diagnostic methods and laboratory techniques and has extensive insight into the post-Alice subject matter eligibility landscape.

For more information or to contact Babek, please visit his Firm Profile Page.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 34 Comments comments.

  1. Concerned October 14, 2018 3:07 pm

    This article seems to give a free pass to the SCOTUS for adding words and conditions to s101. The inventor did not waive their right to insist the application of s101 law be as it was written by Congress..

    I feel the Director’s “practical application” approach now being considered is more consistent with law (new and useful purpose) then this author’s view of “it is what it is” thus adjust to it.

    By standing our ground, we are seeing movement by the USPTO Director in the right direction to arrest the free fall in the U.S. drop to 12th in the world patent community.

    Frankly, I do not care if my invention only solved one business problem of 62 years, and not some technical software issue. And neither would the people, who are the beneficiary of the solution, care if this one issue was the only problem solved by my invention. A technical software solution is not the solution to their problem.

    Grant the new and useful patent and let the people vote with their pocketbooks what is new and useful.

  2. Ternary October 15, 2018 11:46 am

    This is one in a recent series of posts that urge applicants to do a better job in explaining the technological improvement of the invention. This is nonsense in view what Examiners and Courts are rejecting and invalidating on.

    What is the technological improvement of RSA? There is none. RSA leverages the unprecedented performance of general purpose computers to process signals that represent multi-100 digit numbers while benefiting from a lack of capability of the same general purpose computers to factorize the same multi-100 digit numbers. It is a clever use of technology, not necessarily an improvement of the technology.

  3. gene October 15, 2018 12:21 pm

    good article. some attorneys believe that, given, say, 10 years to play with a software program on their pc, they will have gained sufficient knowledge of its operation to write a valid patent claim. BULLSHIZ. only the inventor/programmer can tell you WHAT STEPS S/HE INSTRUCTED THE PC TO PERFORM. only then can you write a valid patent claim. one might not even know what the result of the algorithm is just by reading the claim.

  4. Anon October 15, 2018 2:26 pm

    The Alice legal framework may work as a rhetorical construct to maintain consistency of expression in legal precedents

    Not even that. Not defining key words and phrases does not — cannot — bring any sense of “rhetorical construct to maintain consistency of expression in legal precedents.”

    As to Ternary’s comment: amen.

    Yes, for a subset of (what should be eligible given the words of Congress) innovations, the “tactic” explicated here may well work.

    Bravo for that.

    However – and this is simply no small matter – innovation as envisioned by those very same words of Congress simply is not so limited. ANY view otherwise runs the very real risk of celebrating a broken scoreboard, instead of of what be being done: drawing attention to the larger issue OF that broken scoreboard.

    While Mr. Nouri is a patent agent (and thus has not sworn an oath as attorney before any State Bar), those of us who are attorneys have sworn an oath and most all** oaths that I have seen place the Constitution ABOVE any particular court (including the Supreme Court). As such, we have a duty NOT to capitulate to law as written by the Supreme Court that does not meet Constitutional strictures.

    **As far as I have seen to date, only the Commonwealth of Massachusetts has an oath that arguably treats the courts differently.

  5. Anon October 15, 2018 4:08 pm


    If you really believe “only the inventor/programmer can tell you WHAT STEPS S/HE INSTRUCTED THE PC TO PERFORM. only then can you write a valid patent claim,” you are doing things wrong.

    My guess is that you are not an attorney (let alone a patent attorney with understanding of both technical and legal worlds).

  6. Jonah Probell October 16, 2018 11:25 am

    I have reviewed a lot of 101 case law and come to many of the same conclusions. Drafters of US patents in software-implemented technologies should read this article and take Mr. Nouri’s advice to heart, for these are the guidelines for drafting the litigation-proof patents of the future.

  7. step back October 16, 2018 1:00 pm

    @6 By “litigation-proof patents” I assume you mean ones that can’t be enforced because they are so narrow as to not in any way “secure” for an inventor exclusive rights in that which he/she regards as the invention. The actions of the courts are both illegal and unconstitutional. Art. 1, sec 8, clause 8 was intended (by the ‘originalists’) to “secure” inventors for a limited number of years in creations in the useful arts, not de-secure them.

    Welcome to double-speak America.

  8. Eric Berend October 17, 2018 1:00 pm

    @ 7., ‘step back’:

    Abso-bloody-freakin-lutely right.

    In today’s truly Orwellian ‘double-speak America’, where an accident of your birth means being a person of the “wrong” *IDENTITY*: everyone else is given permission to be racist, sexist and ageist towards you, all while the nihilists scream that it is you that are the designated so-called “bigot”.

    All, for the supposed sins of people who died before we all we born.

    The sheer hypocrisy of this addled blame game sophistry genuinely boggles the mind. But then again, it’s necessary to raise a whole generation* with incredibly intolerant treacherous swelled heads**, to have even a prayer of containing all that sheer dissonance.

    “It takes a VILLAGE”, the ignorati mobster crowd squealed.
    NOT a father. NOT an inventor.
    NOT a person of the so-called “WRONG IDENTITY”.
    And the peanut gallery cheered!
    (see: ‘bread and circuses’)

    And, while the above is about politics of acculturation: in fact, it underpins all of the anti-property attitudes now forming a tailwind to the IP pirates’ power and influence in America today.

    * – now going on, to a second one
    ** – meaning, as good little communists

  9. litig8or October 17, 2018 4:51 pm

    Here again “Anon” rolls out his ad hominem attack speculating that someone is “not an attorney.” On the other hand he quite frequently says that attorneys don’t understand patent law (in particular, those that litigate patent disputes). What he REALLY means is that anyone that disagrees with him is stupid. This is an excellent article with actual advice to prosecuting attorneys. They disregard it at their own peril (and in this date of 2018 are committing malpractice). Unless Congress comes in and changes the law, Anon’s attempt to re-litigate Alice (on a blog) is useless. I assume that real people do not pay Anon real money to advance his theories. If they do, they are getting ripped off.

  10. concerned October 17, 2018 5:20 pm


    You mean unless Congress comes in and changes the law to what SCOTUS did in Alice, then it would be malpractice to continue to argue the same thereafter. It is not malpractice for attorneys to argue what the law really says. The judges are all over the place with their opinions and added terms that they refuse to define.

    Even the Director, USPTO is openly concerned about the patent situation in this country and he is proposing change to s101.

  11. Anon October 17, 2018 7:31 pm

    Here again “litig8or” rolls out a banal complaint, not recognizing that the ad hominem is on point as “not being an attorney” would explain the disconnect being seen. If you did more than merely pass by, you would recognize that “lower case” gene has posted in the past, and typically posts with a viewpoint of a software coder. Or do you think that EVERY opinion (no matter how ill-informed) merits the same worth? Do you have such an aversion to actually applying critical thinking?

    As to “What he REALLY means is that anyone that disagrees with him is stupid.” – not at all. I am quite comfortable with people disagreeing with me, especially when they show that they have a handle on legal concepts. Quite in fact, THAT type of disagreement is most welcome, given as that is the type of disagreement from which I learn from.

    As to any notion from you about committing malpractice, you have left our previous discussions a bit abruptly (tell me again which State are you barred in, do you know what your state attorney oath contains, and what it means; as well as do you really obtain your client’s informed consent when you so readily “give up” and do not challenge bad law?).

    As to “Unless Congress comes in and changes the law, Anon’s attempt to re-litigate Alice (on a blog) is useless.” I am hardly “re-litigating” anything. Again, YOU may feel all comfortable with blindly accepting bad law. Every decent attorney I know of though takes a lot more care of both their knowledge of the law and the possible advocacy that can be rendered from that knowledge.

    But please, feel free (again) to NOT engage on the merits of the points presented and roll out your Alfred E. Neuman style “well, the courts have said…”

    (It is NOT my clients getting ripped off).

  12. step back October 17, 2018 9:38 pm

    Just to echo some of what Anon says @11

    Those of us who went to law school had our minds twisted into “thinking like a lawyer”.

    Patent agents in general don’t go to law school and don’t have the same education pounded into their skulls.

    Article I, section 8 of the US Constitution enumerates the limited powers given to Congress.

    Among these “limited” powers is that of Clause 8:
    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    Congress is NOT granted the power to de-promote the Progress of Science and the useful Arts by de-securing exclusive rights of Inventors to “their” respective Discoveries.

    And most certainly, the SCOTeties are not granted such power.

    At the end of the day, the Constitution is just a piece of paper.
    It is up to the defenders of the Constitution to try to keep it alive and enforced.
    The anti-inventor shills who visit this page are not defenders of the cause. Quite the opposite. They are here to tear down the Constitution and make America, not-America.

  13. concerned October 18, 2018 2:59 am

    I readily admit I am not an attorney, I have no formal law degree. Actually, I have average intelligence at best. I do feel I know right from wrong without the formal training.

    The “go with the flow” approach of this article, some of the comments and other things witnessed in the history of mankind that just cannot be reconciled as the truth. A person should not have to compromise their integrity, principles and any sworn oath to be an inventor or a defender of those rights.

    If SCOTUS must insist to add words and terms to the law, they should at least give the definition of the same. I would have preferred SCOTUS to not accept the Mayo and Alice cases and allow Congress to change the law/constitution to address any perceived grievances. That would silence my complaint.

    However, we are a nation born out of contempt. We floated a boat across a huge pond and fought a war against going with the flow. It is in our DNA to speak out against an injustice.

    Truth is the same yesterday, today and tomorrow. Time will tell if the Alice 2 step approach survives the test of time. I am already seeing the “cause and effect” signs that the Alice test will not survive. The decline of the United States in the world patent community to 12th, an USPTO Director with open concerns, inventors keeping their ideas to themselves, etc.

  14. litig8or October 18, 2018 5:37 am

    To the people that keep citing the Constitution, three quick points. One: the patent clause says “to promote the Progress” of Science and useful arts …. An understanding of Section 101 that would allow for the patenting of laws of nature and abstract ideas would IMPEDE the progress of science because such patents claim things open to all. Second: Congress is fully aware of Alice etc and has not changed the law. If Congress felt that the courts had it wrong they could say so.They haven’t. In fact, a few Bills were drafted that certain people on this thread would like but those Bills don’t pass. So we know for sure that Congress is aware of your gripes and doesn’t agree with you. That’s how lawmaking works. Three: article III of the Constitution gives judicial power to the Courts. Part of judicial power is interpreting legislation. Certain people here seem to think that courts can’t interpret section 101 as if it’s a holy text or in some way special. It is not. It is just a statute, like any other. People here keep saying that the courts haven’t “defined” something. But they have. Just read the cases. For example if someone tries to claim an idea in broad functional terms, implementing on a “processor” or a “computer,” that is a clue that there could be an eligibility problem. For example read the claim in Alice. And then read the xourt’s Analysis. I get it that some of you don’t like how Section 101 has been interpreted but saying over and over that the Supreme Court is wrong is plain stupid. They are right because they are the Supreme Court. What they say is-by definition-correct.

    Finally, there is no non-frivolous argument that abrogating Alice would be good for the economy and good for innovation. Those kinds of patents are horrible for the economy and horrible for innovation. If someone has a real invention worthy of patent protection, they can claim it without having a 101 issue. If you are a patent prosecutor and you don’t know how to write a claim, as of October 2018, that passes 101, maybe you should think about switching to something useful such as selling vinyl siding.

  15. step back October 18, 2018 6:33 am

    litig8or (allegedly) @14

    Now your ignorance of law both theoretical and pragmatic truly shines through.

    It is the “useful Arts” part of Art. I, sec. 8, cl. 8 that blocks the patenting of mere ideas as opposed to useful things and acts.

    Exclusive rights for Writings that “express” ideas are governed by copyright laws.

    I’ll let Anon have the pleasure of jumping all over you on the notion of an appellate court (SCOTUS) making an unsupported finding of fact with respect to “might impede” (his pet peeve IIRC).

    As to Congress having to pass a law, they certainly didn’t do so immediately after the Dred Scott decision (never mind voting rights for women).

    The judicial power (as opposed to the legislative power) does not give SCOTUS the right to say that black is white.

    35 USC 112 is part of the legislated law. It says that it is the inventor who defines that which he regards as the invention, not SCOTUS, not you. 35 USC 103 is part of the legislated law. It says that patentability shall not be negatived by the manner in which the invention was made. Funny that SCOTUS takes it upon itself to decide the manner in which a claimed invention was made. (Ha ha, you and and your devious scrivener first came up with an abstract idea and then y’all disguised it using draftsman’s art.)

    No, I won’t buy vinyl siding from a faker (fake litigator) such as yourself, thank you very much.

  16. concerned October 18, 2018 7:00 am


    A couple counterpoints:

    1). Congress was well aware of the sub prime mortgage scam and did not stop it until the United States almost financially collapsed. The mail carrier counted 72 foreclosed properties in my old small working class neighborhood as the scam was so remarkable and widespread. Everyone knew the score. Where does the United States have to fall in world patent ranking before Congress steps in? 15th, 20th, 50th? Lack of quick action by Congress is not a sign the unaddressed issue is correct.

    2). After Alice, up to 90% of the claims previously approved are now getting axed. Were the day to day patent examiners incompetent before Alice?

    3). My invention solved a problem beyond the reach of universities, experts, attorneys and day to day professionals and that problem was 62 years old (since the inception of the program). The invention is labeled routine, conventional and well understood. Are the universities, experts, attorneys, day to day professionals at Social Security/CMS incompetent? Nine supreme judges apparently saw the routine and well understood solution from one case regarding financial banking settlements that 100s of thousands, maybe millions, of professionals in my specific profession could not see for decades.

    4). The Director of the USPTO is not currently happy with s101 and proposing change

    Just as some people feel that the patent situation before Alice was broken, the current situation/solution after Alice overshot and it is also unworkable. Nobody is incompetent.

    Matters of such importance should be resolved by our elected representatives in Congress, not 9 judges who were not elected and serve lifetime terms. Deep down, those 9 judges have to know Alice did not solve the problem.

    Time will tell.

  17. litig8or October 18, 2018 10:14 am

    The data is IN. After Alice, stupid and bad patents are down and actual innovation is up.


    If you have a real invention Alice wont stop you from a patent.

  18. concerned October 18, 2018 11:01 am


    Do I have a real invention? I did not have a patent, it was rejected.

    Is saving governments substantial Medicaid overpayments stupid and bad? Is finding overlooked SSDI benefits for people with disabilities, as intended by Congress, stupid and bad? Is preventing households from large overpayments before they make retirement decisions stupid and bad?

    Are the professionals of 62 years stupid and bad for not finding this solution before me? I only have 42 years of direct experience and I was lucky.

  19. Anon October 18, 2018 11:02 am


    Consider the source.

  20. Ternary October 18, 2018 11:05 am

    “An understanding of Section 101 that would allow for the patenting of laws of nature and abstract ideas would IMPEDE the progress of science because such patents claim things open to all.”

    For anyone with the slightest interest in and knowledge of the history of science and technology, it should be clear that “laws of nature” and “abstract ideas” are absolutely NOT open to all. Their discovery and development are often extremely difficult and rare. And where a “building block” ends and an invention begins is obviously difficult to determine. For instance a vacuum was considered an “abstract idea” by the common man/woman, who was unable to get their heads around such a strange and abstract notion of nature.

    While in hindsight the concepts of nature appear to be open to all, in practice that is absolutely is not the case. The drafters of the Constitution, under influence of the Enlightenment, understood this very well. It had become clear during the Enlightenment that one had to use one’s brain, analytical skills, and creative powers to come up with new ideas. Almost no fundamental truths about physics and math were ever revealed to any person, without considerable efforts.

    The idea of the patent clause, understanding the barriers to do and publish the work of an invention, was to stimulate the inventor. There is not a shred of evidence that the Drafters were concerned about “abstract ideas” or “fundamental truths,” as long as a useful device was created. Many inventions in the early days of USA were mechanical ones that improved upon human activities or replaced them. Every one at that time would have said it to be absurd to consider those inventions “being directed to an abstract idea.” In fact they would have said “that is why we have the patent clause.”

    It lifted the USA from an agricultural society to a leading industrial nation in a short 100 years as evidenced by the Centennial Exposition in Philadelphia in 1876.

  21. litig8or October 18, 2018 11:13 am

    From an 1852 Supreme Court opinion

    “A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.“

    I own you !

  22. Night Writer October 18, 2018 11:46 am

    @17 litig8or

    So a fluff piece by the EFF with anecdotal stories that were probably not fact checked is the type of source where you get your information.

    OK. Now I understand you.

  23. step back October 18, 2018 2:51 pm

    lit-alleyg8or @21,
    1852? I own you?
    Sounds like someone likes to live in our not so glorious past (Dred Scott and all).

  24. Anon October 18, 2018 5:39 pm

    litig8or’s “ownership” is of a broken scoreboard. I have to wonder how informed his clients are.

  25. Eric Berend October 18, 2018 7:18 pm

    @21., ‘litig8or’:

    Quotation without citation is an abomination.

  26. Babak Nouri October 18, 2018 11:04 pm

    A few here routinely blow so much ideological smoke over an already obscure issue that it makes it impossible to see what we are really dealing with. We are all forced to navigate the same post-Alice landscape as practitioners. This staunch refusal to engage in formulating a workable roadmap and instead obfuscating further that which the courts have already thoroughly obfuscated seems counter-intuitive.

    To blow some of the smoke away lets strip away all the trigger words from the Alice inquiry and re-package it in a different shell.

    Software related cases fall under two main categories with regards to post-Alice eligibility inquiry

    Software Invention (i.e., innovation in or related to the field of software engineering or operation of software) –These cases are less controversial and supposedly, as the courts claim, they have always been patent-eligible. Following recent case law (Enfish, etc,) there is much less ambiguity in this category.

    Almost all the Alice-related drama is associated with the other category of:

    Software-implemented invention or Computerized method – These cases are deemed patent-eligible only if the method itself, irrespective of its computer implementation, is patent eligible. In other words, for these cases, the computer implementation aspect does NOT contribute NOR detract from the eligibility question. The eligibility, therefore, lies with the method itself.

  27. Babak Nouri October 18, 2018 11:05 pm

    Ternary @ 2

    Abstractness findings in software cases are almost entirely predicated upon “not technically specific enough” claim language. Describing technological improvement is just a fail-safe drafting practice to contextualize and highlight the novel claim elements that may be too technically subtle or specialized for an Examiner or Judge to readily pick up on – it simply makes your job easier.

  28. Babak Nouri October 18, 2018 11:20 pm


    If you are a patent practitioner registered to represent applicants before the Patent Office then you have little choice but to remain compliant with the Patent Office Eligibility guidelines – which are directly informed by the precedent set by the High Courts. Your steadfast devotion to the Constitution and the spirit of the law is laudable if somewhat miss-applied outside of a purely ideological bubble and advocacy circles. You don’t have to like the “bad law”, but personal feelings aside, you have to navigate your way through the same maze that we all have to contend with – Unless, you don’t really practice in this space and just show up to philosophize here, – Throwing your hands up and crying foul, because the terrain is suddenly more challenging, instead of strategically adapting to the harsher terrain, is an uninspiring posture, no matter how you spin it. While you continue to draw attention to the “broken scoreboard” and wait for the Congress to come to save you from Alice, the rest of us still have to continue to operate under these very conditions. If you indeed practice according to what you preach, then, from where you stand, your nuanced knowledge of the law notwithstanding, you are, simply ill-equipped to consult or prosecute software applications in the current atmosphere, nor do you seem remotely interested in that anyways.

    step back @ 7:
    Narrowing the scope of the claim is not a strategy for Alice-proofing a patent. Neither does Alice-proofing require narrowing the scope of your claims. This is not an informed perspective on the current eligibility standards under Alice. I have never had to narrow down a software claim to push it past a 101 rejection if the claim contained a single novel technical feature and the Spec described the technological improvement resulting from that single feature. All I’ve had to do was to point it out to an Examiner who had missed it on the first review – look at it like this, If there is, in a disclosure in front of you, any feature that you or the inventor, may consider as a technical novelty then you would want to claim that feature anyway, even if Alice had never happened, that’s just basic claim drafting. If there is no technical novelty then no matter how much you narrow the scope of your claim it will have absolutely no impact in turning a 101 rejection – as it stands.

  29. Ternary October 19, 2018 12:48 am

    Babak @27. I wish it were true. Software inventions related to cryptographic inventions are mostly rejected on the use of mathematics. Not on lack of technology. The fact is that cryptography is modeled and explained by mathematics and the mathematical expressions, especially in novel methods provide significant barriers in getting past Alice. This leads to the strange situation that a totally novel method (for instance in homomorphic processes or Learning with Errors) faces an almost immediate Alice rejection, while an improvement of an existing cryptographic method, for instance a faster algorithm in RSA, experiences little problems (but not always).

    A continuing worry is that an inventor may eventually overcome a 101 rejection in the USPTO, but is left with the uncertainty of pending invalidation, on the same reasons, in the Courts.

    Increasingly in this world inventions are modeled and often claimed in mathematical terms. In that sense there is no improvement of a technology. As with RSA a whole new technology is being developed. I use examples in cryptography, but any modern signal and image processing and deep learning (AI) invention is at risk for a 101 rejection or future invalidation as being directed to an abstract idea. What the heck, transmitting and receiving data is now argued before the CAFC as being directed to an abstract idea.

    Similarly business method patent applications and issued patents are continually at risk for rejection or invalidation because of being directed to a certain type of problem. Look at the original Alice patents with an overload of technical details. The “technological contribution of the invention” in Alice is to do settlement risk management smarter, faster and more reliably. We now all know that this “technological contribution” was not given any weight, because despite it was technologically correct and fully explained, it was implemented on a computer.

    I am curious to know if you feel that Alice patents could have survived SCOTUS review if it had been claimed differently. My personal feeling is: never. SCOTUS was waiting for a case like this: a particular computer implementation of a process that previously was done by human action. Such automation has been a long-time irritant to the courts and no amount of technical data would have helped to salvage Alice inventors/assignees.

    Personally, I believe that patents like Alice fall in the automation category of “flow-management”, often part of ERP programs. As such they may be found to be obvious. Declaring them “directed to an abstract idea” is nonsense. And in most cases (more than 70%) no matter how much you load up the spec and claims with technological data, it will not salvage your application or patent. In fact it is one of the easiest Rule 36 decisions of the CAFC.

  30. step back October 19, 2018 6:00 am

    Babak @26

    Smoke over waters? No. What is happening here is that we expose the SCOTeties (SCOTUS), the Fedralies (CAFC) and them in the PTO who are apologists for the Efficient Infringement Empire as the charlatans they really are.

    Only Congress has the Constitutional authority to legislate the laws that the PTO is to follow. The plain words of 35 USC 101 are well known. Any machine. Any process. Etc., etc. The SCOTeties are oblivious to the words of 35 USC 112 about the inventor defining that which he regards as the invention. They are oblivious to the words of 35 USC 103 about patentability not being negated by manner of making. They bypass basic appellate principles by making findings of fact at the appellate level and out of rarefied Medieval air (the “might impede” and “building blocks” BS).

    Yes most of us know how to play the Alice 2 step game. But that does not make what is going on right or just. The word, judicial derives from “justice”. Remember? We refuse to accept the new normal as a permanent one. You gladly do. We agree to disagree on that tactic. Simple as that. Not smoke on the waters, the fire is in our eyes.


  31. concerned October 19, 2018 6:20 am

    Ternary @29:

    I feel you are correct. My application was rejected as it is a business method because it only solves one problem. A real big problem, but it was just one problem. I have no 102, 103 or 112 rejections, just a 101.

    And I also feel SCOTUS was just waiting to take a case that computerized an existing solution previously done by humans.

    I disagree with Mr. Nouri @26: My invention was a first ever solution. It is only rooted in computer technology because that is where the problem resides, in the SSA’s computer network (McRO-my application should be eligible). A generic computer does not added to the solution, or detract, yet I was rejected. My solution did not exist when only pen and paper was used. I am penalized because of the invention of computers, the USPTO zeros in on the word “computer” and rubber stamps “rejected”. The USPTO had my application dead on arrival even though the examiner was apologetic and told me 3 times it had patentability in the phone interview.

    In Anon’s defense, that what happens when we get away from black letter law and substitute opinions. This author has his opinion, the posters have their opinions, I have my opinion, and USPTO has their additional opinion to go past Alice and include in their rejections business methods that were never done by humans. None of my claims have ever been done on this planet. When and where do the opinions stop?

    Who should care that my process just solved one problem? Would a generic computer attached to a generic shoebox that somehow solves one horrible disease receive a patent? Who knows? The opinions would be all over the place, yet, everyone would be in line to be cured if they had that one horrible disease while they were still arguing with each other.

    Just like SCOTUS was waiting for their “Alice” case, an author has reached out to me as he was waiting on a case just like mine for his upcoming book. I feel it is the poster child on what is wrong in the patent environment. The extremes to reject a patent application that has software: toss 2 university studies, toss overwhelming evidence from every possible end user, toss official USPTO memos, take bits and pieces from a court case here, a court case there. I feel like I am back in kindergarten during recess when we made the rules up as we went during a playground game. Right or wrong, those making up the rules never lost.

  32. Anon October 19, 2018 5:04 pm


    I appreciate your taking the time and attempting to “help” the situation for which you see some general confusion. That effort in and of itself is commendable.

    But be aware that your effort should not be taken as some “right way” to the exclusion of either “philosophy” or actions that differ from your understanding.

    For example, your reply at post 26 incorrectly projects some type of “ideological blowing smoke.” By taking such a stand, you do ALL a disservice. What seems “counter-intuitive” to you is more correctly characterized as you lacking a legal appreciation of the state of the law and how to address that legal state.

    I “get” that you are not an attorney, but your “advice” DOES carry the impact of providing legal advice. As a patent agent, you ARE permitted to provide legal advice to a certain extent.

    I also “get” that you want to give some “pragmatic” advice. But please be aware that in order to obtain full informed consent, you should be giving a full view of the law. And while that certainly includes the advice that you seem to want to hang your hat on (your “workable roadmap”), it very much should include a larger view of the infirmity of that current “roadmap,” and the option to the client for ways of challenging that infirmity.

    For example, you post at 28 incorrectly advises that “ you have little choice but to remain compliant with the Patent Office Eligibility guidelines – which are directly informed by the precedent set by the High Courts.” As you SHOULD know, the patent office guidelines are NOT controlling law (and contain a disclaimer explicitly to that effect). There are MANY places in the MPEP in which what the MPEP states is in fact legally incorrect. Many cases are attached to “form paragraphs” and used in situations in which the actual holding of the case is NOT to the effect that the guidance suggests.

    You appear to place TOO MUCH credence to the “directly informed by the precedent set by the High Courts” and need to recognize that the Office view cannot take the place of your OWN being informed. Yes, I am aware that such is more difficult for a patent agent who has not been trained in legal thinking, but make no mistake, that ethical responsibility is very much still in place.

    I have to chuckle then that you picture my views as somehow being even “somewhat miss-applied.” There is quite a difference between navigating (with an actual understanding) and merely being “along for the ride” with whatever the Office may reflect in the MPEP.

    The “strategically adapting” that you seem to want to advocate necessarily includes understanding how the “scoreboard is broken,” and being able to advise BOTH as to the “easier” follow what appears to be controlling law as well as advising as to what may be challengeable decisions that are currently in place. YOUR responsibility is to know BOTH. And I would put it to you: the “strategically adapting” may not be sufficient if all that you are doing is (like litig8or) blindly accepting case law. To be certain, clients may well choose to “follow the easier – albeit less rewarding – path and not fight for their full rights. That is the client’s choice, after all.

    As to your comment of “While you continue to draw attention to the “broken scoreboard” and wait for the Congress to come to save you from Alice” you absolutely miss the point of my advocacy on these boards.

    There is NO “wait for Congress” as if that were the only thing to do.

    Yes, I am not empowered to actually change the law directly (and as an important point, neither is the judicial branch to re-write, as opposed to actually interpret, the law), and I certainly desire Congress to act, but the point of the dialogue – and of the call for ALL to engage in critical thinking rather than be a mindless sheep to the case law and to the Executive Agency “guidance” is the opposite of “only wait.” My posts are very much in line with “still have to continue to operate.” But you will want to operate with a full understanding, and your view of “ our nuanced knowledge of the law notwithstanding, you are, simply ill-equipped to consult or prosecute software applications in the current atmosphere, nor do you seem remotely interested in that anyways.” could not be more wrong.

  33. Anon October 19, 2018 5:18 pm

    step back,

    A great riff, but the lyrics do not match up.

    We refuse to accept the new normal as a permanent one. You gladly do. We agree to disagree on that tactic. Simple as that.

    I would also give pause to the notion that it is “OK” to merely agree to disagree. I think it NOT “OK” to merely agree to disagree if the “disagreeing” is stemming from a lack of appreciation of either (or all of) the law, our duty to know the law, and our duty to both the client and to NOT placing the Court above the Constitution.

    The “gladly accept” — especially here as attempted to be dressed up as some “strategic adaptation” — that is based on NOT understanding the bigger picture IS something to be disdained.

    Members of our community (be they members such as patent agents, or members outside of the patent bar, but belonging to a State bar) that instead seek to disparage those that ARE providing the background for true strategic “adaptation” (which includes providing the background for fighting that “new norm”) deserve a much more harsher treatment than merely “agree to disagree.” You are absolutely correct in that fire in the eyes – and that is not to be confused for blowing smoke, over water or anywhere else.

  34. JTS December 4, 2018 12:47 am

    Mr. Nouri:

    Well-written practical advice. I follow a similar approach and never see Alice rejections.

    I would add that practicioners seem overly shy of background discussion. Rather than a single vague Background paragraph that’s so in vogue, the better practice is to go into the state of the art in detail, explain the problems thoroughly, and set up the solution to be revealed in the Detailed Description (where benefits can be highlighted and related back to the Background).

    Yes, that creates admissions of prior art. But that’s part of the practicioner’s job — to know the state of the prior art that is relevant to the invention. There’s no problem in admitting something is prior art when in fact it is. If the Examiner cites it, so what? One source or the other, it’s the same result.