Strategies For Prosecutors Post-Alice — Focus On The Facts

This article appeared in the March 2, 2015 Edition of IP Law 360

There is now little doubt the Supreme Court’s decision last year in Alice Corp. Pty. Ltd. v. CLS Bank Int’l[1] has had and continues to have a profound impact on many aspects of patent protection. There seem to be new developments every day – Federal Circuit and district court decisions, new guidelines from US Patent and Trademark Office, and additional USPTO examples regarding patentable or unpatentable subject matter. On any given day in patent prosecution, it is difficult to know what will be most effective in advancing the client’s application in the face of a difficult Alice conundrum. It may help, though, to keep in mind that the burden rests with the examiner whenever making any rejection. Much like an art rejection, the examiner must address all requirements of each rejected claim (ordered list of elements, as in Alice or claim as a whole as in Diamond v. Diehr[2]) and must present evidence on the underlying factual issues to support the legal conclusion that claim is unpatentable under the statute. It is time to adapt many of our response techniques, honed in overcoming obviousness rejections, to addressing 101 subject matter rejections.

Much like the analysis with regard to obviousness under Graham v. John Deere Co[3], the Supreme Court’s Alice decision defines elements of a factual inquiry underlying the ultimate determination to deny patent protection for a claimed invention. More specifically, eligibility under 35 U.S.C. 101 implicates underlying factual determinations with regard to: (1) the language of the claim if any that in some way implicates an idea that may arguably be abstract and (2) what makes the concept recited in the claim an abstract idea of a type (e.g. fundamental economic practice); and (3) if directed to an abstract idea, identity of the other element or combination of elements in the claim that are not abstract (analogous to the difference in an analysis under 35 U.S.C. 103) and (4) evidence to show that other elements alone or in combination are not sufficient to ensure that the claim amounts to significantly more than the abstract idea itself, e.g. that those other elements are conventional (similar to know in a secondary prior art reference).

Many Alice-based 101 rejections seen so far do not really address the underlying facts and present evidence in comparison to the claim in the rigorous manner more commonly found in 103 obviousness rejections. As such, 101 rejections at present are open to challenge on the facts, and thus, for failure to present a prima facie case of ineligible subject matter.

Dealing with art rejections first may help focus the case in favor of eligibility under 101. In many cases, we face more than one ground of rejection, e.g. 101 as well as art (35 U.S.C. 102 or 103). In that situation, we need to overcome all parallel grounds in order to get to an allowance. Those of us who routinely prosecute patent applications deal with art rejections all the time in cases that do not suffer 101 rejections. We usually can find some distinction to use via a narrowing amendment and/or argument of distinctions to address and often overcome the art rejection. If we cannot defeat the art rejection, we will not get the patent even if the examiner finds that the claims are patentable under 101. As a practical strategy measure, I usually recommend that we first determine how best to overcome the art rejection(s). In many cases, some aspect of the patentable distinction(s) will relate to technology in some way that also supports one or more factual arguments in favor of 101 eligibility, even if only indirectly. For example, if the courts and the Patent Office can conflate the issues to argue against patentability, we can try to conflate the issues to argue in favor of patentability. So, we can argue that if the claim as a whole is novel and unobvious, the claim as a whole obviously involves significantly more than an abstract idea, e.g. more than what was a fundamental practice prior to our filing date (or before the invention of the computer and the Internet).

After distinguishing the art, we then consider whether some further amendment, e.g. to add more express technology, might enhance our client’s position on the 101 issues. Then, having decided on the proper scope of the claims for the response and possible options to link art and 101 issues, we can turn to the facts and typical lack of factual evidence offered by the examiner in support of the 101 rejection.

Unlike some of the published cases that turn on 101, I suggest that the law requires the Patent Office to deal appropriately with all of the factual issues underlying the patentable subject matter conclusion[4]. Hence, we should argue the facts, the facts, the facts, for example, analyze the entire claim, the alleged abstract aspect and the ‘something more’ in the claim and challenge the rejection for failure to do so.

If possible, argue that the examiner has not made a prima facie case because the rejection does not address the facts but instead relies on conclusory statements with little or no proof regarding one or more key points, e.g. re:

  1. The idea in the claim that is allegedly abstract, for example, consider/discuss:
    • Is the rejection really addressing what’s in the claims in context.
    • Is the identified abstract idea free of technology and therefore broadly abstract as opposed to a concept that already includes technology more appropriately considered under the second prong of the two-part framework.
    • Is the rejection over-simplifying the steps/functions of the claim in its characterization of an abstract idea.
    • What proof does the examiner offer that the idea is abstract (‘fundamental’ or the like).
    • Essentially, these or similar considerations support an argument that the examiner has not provided factual evidence in support of the conclusion that the claim is directed to an abstract idea.
  2. The facts as to all the other limitations:
    • What the other recitations really say – the difference from just the abstract idea.
    • Why the other limitations are generic or known or doing what generic devices are known to do, etc. – What proof if any does the rejection present?
    • Again, is the examiner failing to really address all of the actual claim recitations, at least those that are not part of the allegedly broad abstract idea.
    • Essentially, these or similar considerations support an argument that the examiner has not provided factual evidence in support of the conclusion that whatever is in the claim besides the alleged abstract idea do not amount to ‘significantly more.’
  3. The claim as a whole – more than abstract, e.g. novel and unobvious (in view of patentability over art under 102 and 103).

In any case, hit the facts hard on each prong of the framework you chose to attack. The examiners do not seem to be dealing with the claim language and facts to support their conclusions as to ineligibility.

For example, in the rejections I have seen so far, the examiners have not compared the steps of the allegedly fundamental abstract idea to the steps or functions of the claim. This can support an allegation of failure to present a prima facie case for the rejection under one or both prongs of the framework. This failure also enables the responding attorney to characterize the abstract aspects if any in the claim in the most favorable light.

Another approach is to attack the facts relating to the split between the abstract idea and the ‘something more’ in the rejection. The Supreme Court pointedly refrained from giving a test or definition for judging whether a concept implicated in a patent claim is an ‘abstract idea.’ A number of cases immediately following the Alice decision skirted the issue by noting that the claims in question were at least as abstract as those in Alice and/or in Bilski v. Kappos[5]. More recently, however, the Federal Circuit, defined an abstraction as “an idea, having no particular concrete or tangible form.” Ultramercial, Inc. v. Hulu, LLC[6]. Examiners often inappropriately sweep too much technology into their statement of the abstract idea. Technology is not abstract and is more appropriately considered as something more under the second prong of the Alice framework. Parsing out all the technology from the abstract idea in the first part of the framework leaves a greater technological non-abstract difference, the something more, for the application prosecutor to focus on in the explanation of why the difference is significant.

For a detailed technical claim that has fallen victim to an Alice’s 101 rejection, for example, it may be useful to reproduce the broadest claim in some manner highlighting the few words that might arguably correspond to some broad abstract idea per the Ultramercial test and thereby distinguish the idea from what more the claim actually recites. The approach at least illustrates how much more the claim really recites, and the prosecutor can challenge the examiner to come forward with evidence as to why all those additional claimed features are not sufficiently significant. For example, challenge the examiner for not producing any evidence that all the other technical recitations are “conventional” or merely operate in a “conventional manner,” as is often asserted with little or no supporting explanation in Alice type 101 rejections.

Another factual approach is to select a case where the claims were found patent eligible, e.g. Diehrsupra or DDR Holdings, LLC v. Hotels.com, L.P.[7], or one of the recent examples from the USPTO[8], and argue as to how rejected claims are like those that were eligible in the chosen example. Focus on the broad minimalist aspect alleged to be abstract versus the recitations relating to the technical solution and improvement to the other technology (similar to addressing an Internet centric problem in DDR or to improving the curing of rubber in Diehr).

If practical at a particular stage of prosecution, another approach is to explain why the claim does not preempt the allegedly abstract idea. Although not dispositive by itself under the approach many courts and the USPTO seem to be applying, lack of preemption by an actual specific claim is a policy statement of why allowance is really justified in the particular case before the examiner or the Board. This would be a bit like opposing an examiner’s alleged reason for a modification or combination (or noting lack thereof) in an obviousness rejection. Although the examiner or even the Board may not rely solely on such an argument, the argument may help tip the scale in our favor or at least help set the stage for further Appeals.

If this begins to sound a lot like challenging rejections under 103, it should. The burden of proof on the Office is the same, regardless of the applied section of the statute; and there are direct parallels between the factual inquires underlying the two types of rejections. As patent prosecutors, we know how to respond to obviousness rejections; and we should be able to adapt many of the tools from successful responses against obviousness rejections to the equally fact sensitive issues relating to patent subject matter eligibility rejections under the Alice framework.


  1. 573 U.S. __, 134 S. Ct. 2347 (2014).
  2. 450 U. S. 175 (1981).
  3. 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
  4. See In re Oetiker, “the [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability” (977 F.2d 1443, 1445 (Fed. Cir. 1992)). Where a legal conclusion is based on underlying factual determinations, the examiner bears the burden of presenting substantial evidence on each factual issue, to offer applicant an opportunity to appropriately respond and to provide an adequate record for an Appeal (see e.g. In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000); and In re Zurko, 258 F.3d at 1386 (deficiencies of the cited references cannot be remedied by general allegations of “basic knowledge” or common sense)).
  5. 561 U.S. 130 (2010).
  6. No. 2010-1544 (Fed. Cir. Nov. 14, 2014) (Slip Opinion, at page 9)
  7. 773 F.3d 1245 (Fed. Cir. 2014).
  8. U.S. Patent & Trademark Office, “Examples: Abstract Ideas,” January 27, 2015.

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