Introduction: Responding to Section 101 rejection

The guidance portion of Bitlaw is provided by the attorneys of Forsgren Fisher McCalmont DeMarea Tysver We have a great deal of expertise in many areas of patent law including patent office rejections and legal invalidity challenges under Section 101. Please contact us if you need any assistance!

This is the fourth of four different sections that make up our guidance on Section 101 rejections. The first section describes Section 101 issues in general and introduces the two-step Alice test. The second section discusses how to apply the first step of the Alice test, while the third describes the second step of the test. This fourth section provides a list of potential arguments that one can make when responding to a rejection from the patent office under Section 101. These same arguments would be useful in defending an issued patent from an invalidity challenge. Note that this arguments section depends heavily on the explanations found in the first three sections, and links back to the relevant portion of those sections where appropriate. If you have any comments or suggestions for this guidance, please contact Dan Tysver.

Claims Outside one of the Four Statutory Classes

Explain how the claim falls within one of the classes

As explained in our guidance on The four statutory categories under Section 101, the patent act states that patents are to be granted on "any new and useful process, machine, manufacture, or composition of matter." Patent examiners will reject claims that do not fall within one of these four categories. Sometimes, however, the examiner will focus on only a portion of a claim. For instance, while data and software in the abstract do not fall into one of these four categories, data or software residing on a physical computer will be considered a machine under Section 101. The computer is a machine, and it does not become less of a machine even though it contains software or data. An argument responding to a rejection on a computer and data combination should remind the examiner that the claim should be viewed as a whole.

Amend claims to fall within one of the classes

In most cases, these types of rejections can be overcome by amending your application to explicitly claim one of the four statutory classes. For instance, instead of claiming an electromagnetic wave having certain characteristics (which is an unpatentable invention), you can amend your claims to cover a method for creating that wave (statutory under the "process" category) or to cover a device that creates the wave (statutory under the "machine" category).

In some cases, the broadest reasonable interpretation of a claim would cover both statutory subject matter and subject matter that does not fall within one of the four classes. For instance, claims to "machine-readable media" include both physical computer memory and transitory electromagnetic waves. These claims should be amended to remove the possibility of the claims covering subject matter that falls outside the four statutory classes.

Proving Eligibility Under Step One of Alice Test

Explain how examiner failed to properly apply step one of the test

The first step in responding to a rejection of a patent application under Section 101 is to review the examiner's logic and ensure that the proper process was followed in applying the Alice test. In connection with step one of the test, we provided guidance on the fact that the Comparison of step one is between the "character" of the claim and the ineligible concept. Based on our understanding of Federal Circuit cases, we believe the required process of analysis under step one to be as follows:

1. Determine the "character of the claim" by:
   • Examining the claim as a whole
   • Examining the specification
   • Identifying the focus of the claimed advancement over the prior art
2. Once identified, analyze the character of the claim to see if the claimed advance is directed to the ineligible concept (the abstract idea or natural phenomenon).

To prepare a response to a rejection under Section 101, we suggest that you carefully review our guidance that outlines this procedure, and then point out in your response where the analysis of the office action falls short of what is required by the Federal Circuit.

Don't Allow a "High Level of Abstraction": Once the procedure for step one is understood, it becomes easier to identify situations where step one of Alice may have been misapplied by the patent office. For instance, it is clearly an error to simply describe the claim “at a high level of abstraction” as this would essentially all but ensure “that the exceptions to §101 swallow the rule.” Enfish. Nonetheless, a large percentage of office action do exactly that. Your response back to the patent office should point out these types of shortcomings.

Require the Examiner to Determine the Claim's Character: Furthermore, step one is not satisfied if an examiner first identifies an abstract idea or natural phenomenon, and then merely points out which elements of the claim relate to that ineligible concept. Rather, the claim as a whole and the specification must be analyzed first to determine the "character" and "claimed advance" of the claim. Only at that point is any comparison made between an ineligible concept and the identified claimed advance, as explained in our guidance. Examiners will frequently skip the entire process of determining the character of the claim.

Unfortunately, the MPEP section describing how to apply step one of the Alice test (MPEP §2106.04) does not instruct examiners to identify the claimed advancement over the prior art found in the claims. In fact, it makes no mention of even identifying the "character" of a claim, which is an essential part of the step one analysis as recognized by numerous Federal Circuit decisions. See, e.g., Enfish, Internet Patents, and Affinity Labs. It does however require that examiners "consider the claim as a whole when performing the Step 2A analysis.” MPEP §2106.04. Similarly, section 2106.04(a) states that it is "critical that examiners … evaluate both the specification and the claim." Arguments with examiners should point to the case law that requires an evaluation of the claimed advancement over the prior art (see our guidance), and then emphasize that even the MPEP requires that both the specification and the claims as a whole must be examined in step one to identify improvements over the prior art. See MPEP §2106.04(a) (which specifies that the specification should "disclose sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement").

Don't Allow Prior art/Novelty/Routine Steps Arguments in Step One: As explained in our Role of Novelty and Prior Art in Step One guidance, it is inappropriate to consider whether or not claim elements are novel, obvious, or even routine when evaluating step one. An examiner's attempt to characterize a claim element as routine during the step one process of the Alice test should be pointed out, and the examiner should be made aware that such characterizations are irrelevant to this portion of the test.

Examiner must use "Directed to" or "Recited" Language: Sometimes an examiner will use inappropriate descriptions in applying step one of the Alice test. As explained in our guidance on Claims must be "directed to," and not just "be based on," the ineligible concept, it is not enough for a claim to involve, embody, use, reflect, rest upon, or apply an abstract idea or natural phenomenon, because the Supreme Court has recognized that all claims do these things. Interestingly, the patent office has adopted the phrase "recite" as a synonym for "directed to" (see MPEP §2106.04). If the examiner says that your claims involve, embody, or use an ineligible concept, use that phrasing against him or her and explain that that they are not applying the correct test under step one. If they state that the claim "recites" an ineligible concept, then your only complaint is probably to the author of the MPEP.

Redefine the "character of the claim" using proper test

Regardless of whether the examiner performed the correct analysis under step one of the Alice test, any response to a rejection should walk through this test in order to redefine (or properly define) the claimed advance over the prior art. Look through the Comparison of step one is between the "character" of the claim and the ineligible concept guidance and follow its analysis. This will involve both looking at the claim "as a whole" as well as evaluating the rest of the specification.

Argue that character of the claim is directed toward technical improvement: As you determine the character of the claim, you should strive to define the character as a technical improvement. This analysis should identify a claimed advance that forms the "character of the claim as a whole." Ideally, the claimed advance will be a solution to a technological problem. It is important to identify portions of the specification that describe the problem and that describe how the claimed invention improves that technology.

Be Sure that the Claimed Improvement is Reflected in the Claims: If the claimed advance that you wish to focus upon is not currently set forth in the claims, either amend the claims to specifically include the advance within the claim language, or argue that the claims are properly interpreted to include those elements.

Argue closest analogy to case that allowed claim under step one

Once you have identified the claimed advance and defined the character of your claim as a whole, you are ready to compare that character against the ineligible concept. In the context of abstract ideas, your claimed advance should be compared against the federal cases that have considered the abstract idea exception to patentability.

Use the Bitlaw Section 101 Cases Index: Bitlaw contains a collection of Section 101 precedential, appellate cases that have been decided since the Mayo and Alice decisions. The index to these cases includes a sortable list of all cases, including case summaries and case results, that can be used to identify cases and develop appropriate analogies. By clicking on the headers of the columns, one can sort the cases in the index to focus in on cases with certain holdings, such as cases in which the claims passed step one of the Alice test (those found to be "Not Abstract" or "Not Natural Phenomenon"). Using the case summaries, find cases that seem most analogous to your claimed advance, and argue from the language of those cases that the logic found in those cases applies to your claims.

Make specific analogies to actual cases: Your argument will be greatly strengthened if you identify particular cases involving inventions that are analogous to your claimed invention and were found to be patent-eligible. For instance, in the Enfish case, the claims were patent eligible under step one because they were directed to a technological improvement over prior art computer databases. Databases are implemented in software, so Enfish teaches that technical improvements to software operating on a computer are sufficient to pass step one. Furthermore, the Federal Circuit in Enfish emphasized that the specification identified specific improvements that the invention provided over the prior art. This case is therefore very useful to inventions that also involve a technical improvement to software operating on a computer, especially when the specification provides a description of how the prior art deficiencies are overcome by the invention.

Distinguish Those Cases Cited by the Examiner: Almost all Section 101 rejections from the patent office will cite analogous cases. Those cases will also be found on Bitlaw's Section 101 cases. These should be reviewed and compared against the identified character (claimed advancement) of your claims. Finding legitimate reasons why the cases cited by the examiner are not relevant to your facts is as important as finding positive cases that support your position.

Distinguish Categories of Abstract Ideas Cited by the Examiner: The examiner is also likely to cite one or more categories of abstract ideas as described in our guidance. Review this guidance and draft an argument refuting the categorization. Unfortunately, because these categories are so amorphous and overlapping, it is difficult to define the boundaries of each category, and therefore difficult to argue against the examiner's categorization.

Argue that claim does not use computers "merely as a tool"

In the context of computer-implemented inventions, you should take advantage of the "shadow rule" that we discussed in the step one guidance we provided on Improving Computers vs. Using Computers as a Tool. As explained in that guidance, courts are frequently basing their decisions under step one on whether or not the character of the claim is improving the functioning of the computer, or whether the computer is merely being "as a tool" to improve an abstract process. This guidance should be reviewed, and a relevant argument should be developed based on the cited cases. Convincing an examiner that an invention is focused on improving the operation of the computer, and not merely using the computer as a tool to improve some other process, may be key to an invention being considered patent-eligible.

If possible, explain how the new process increases the efficiency of the computer or other components that use the software. Argue an analogy to Enfish, in which the Federal Circuit considered software claims relating to computer databases to be patent-eligible because of the benefits created through the software, namely increased flexibility, faster search times, and smaller memory requirements. Be sure to point out places in the specification where the prior art is described as "slow," "complex," "inflexible," or "difficult to use" and compare that to descriptions in the specification that show the claimed invention to improve these prior art technical problems. You should also consider arguing that specific claim limitations relating to the user-interface are technical in nature, comparing those improvements to those found to be technical improvements in Core Wireless and Data Engine.

Argue that the claims recite a particular solution as oppose to claiming an outcome

Our guidance also proposed the existence of a "shadow rule" relating to Claiming a particular solution vs. claiming an outcome. As explained in this guidance, numerous cases have suggested that the entire analysis under step one may turn on whether the claims are written so as to claim only the desired results of a process, or whether the claims specify a specific means or method for producing that result.

Your claims should be written in such a way that it can be argued that the claims specify a specific means or method for producing a desired result. In some cases, it may be necessary to add claim elements so that a good faith argument on these grounds can be made. The claim elements, obviously, should be carefully selected so as to avoid overly-narrowing the claims.

Once the pending claims are on the correct side of the "claiming a particular solution" vs. "claiming only the outcome" divide, numerous cases identified in the guidance should support an argument that the claims are patent-eligible under step one. Furthermore, cases cited by the examiner against your claims can frequently be distinguished on this basis, since a great many of the cases that refused eligibility under step one have included some language indicating that the claims were written too generally or claimed only a desired result and not the process undertaken to reach that result.

Argue claims do not merely gather, analyze, and output data

One of the "shadow rules" discussed in our step one guidance relates to Data Collection, Analysis, and Results. This rule explains that courts have routinely identified claims that "start with data, add an algorithm, and then end with a new form of data" as being directed to an abstract concept. This particular line of cases is one of the most difficult arguments to overcome in a Section 101 rejection of computer software.

One possible technique of overcoming these cases is to compare the cases cited in that guidance (or at least the cases cited by the examiner in your rejection) against those cases that have found software to be patent-eligible under step one of the Alice test. The guidance explains that cases that aren't concerned with particular types of data are more likely to be allowed. If possible, it may be helpful to argue that your claims also are not concerned with the manipulation of particular data content, but in fact improve the functioning of the computer regardless of what the data describes. In a surprising number of cases, the content of the data can be stripped out of a claim through an amendment and the claim will remain non-obvious under Section 103.

Should you argue preemption?

As explained in our guidance, it may be difficult to develop a persuasive argument to overcome a Section 101 rejection based solely on the logic that the pending claims do not preempt the abstract idea. While such arguments have worked in the past, the MPEP has instructed examiners that "questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo."

Step One under the markedly different characteristics test

Our guidance on the markedly different characteristics test (the "MDC test") describes the process that the examiner must undertake to apply the test to a claim containing a nature-based product. Further details of the MDC test and its application are set forth at section 2106.04(c) of the MPEP. As part of the test, the examiner is to identify the nature-based product in the claim, and then select a naturally occurring counterpart. You should confirm that the examiner properly identified the nature-based product in your claim and its natural counterpart according to the process set forth in the MPEP.

The "MDC test" asks whether the nature-based product has characteristics that are markedly different than the naturally occurring counterpart. Remember that a difference may take the form of a structural difference, so a different chemical structure between the claimed product and the natural one will allow the claim to pass the MDC test, resulting in the claim be patent-eligible under step one of the Alice test. Similarly, a difference in function, even whether there is not any structural difference, will be sufficient under the MDC test.

Proving Eligibility Under Step Two of Alice Test

Explain how examiner failed to properly apply step two of the test

We explained above about the importance of ensuring that the patent examiner followed the correct process for analyzing step one of the Alice test. It is also important to consider whether the examiner properly applied step two of the Alice test to your claims. As explained in the Applying Step Two of the Alice Test guidance, the goal is to determine whether a claim directed to an ineligible concept contains an inventive concept sufficient to transform the claim into a patent-eligible claim. The guidance should be reviewed to ensure that the examiner properly analyzed step two in rejecting your claims. Particular areas of concern that you should consider are highlighted separately below.

Identify Elements Where Inventive Concept Can be Found

The guidance that we provide for Where may one look to find the inventive concept explains that the search for the inventive concept is to be found in the "additional features" of the claim outside the abstract idea or natural phenomenon. But some courts have taken a permissive view of this issue.

Aggressively define the "additional features" of the claim: Until more definite case law is developed, you should follow the path of Bascom, which allowed inventive concepts to be found in claim elements that appear to be defining a more definite implementation of the ineligible concept found in those claims. Define the ineligible concept broadly, and consider drafting claims with separate elements that define that ineligible concept. In this way, additional claim elements that are not required for the abstract idea/natural phenomenon can be easily identified, and these claim elements can be examined for the inventive concept.

Argue that Claim Elements are not Well-Understood, Routine, and Conventional

The question as to whether claim elements are well-understood, routine, and conventional (collectively "conventional" for this discussion) is perhaps the most important issue in the performance of step two of the Alice test. As explained in our guidance on Well-understood, routine, and conventional claim elements, at least one federal judge has noticed that recent decisions have had the “effect of reducing the entire step two inquiry into what is routine and conventional.” In analyzing whether your claim elements are conventional (and therefore are not an inventive concept) or are unconventional (and then probably an inventive concept), you should consider the following points (as more fully described in the guidance).

Argue that additional claim elements are unconventional: As explained above, it is likely that some elements of your claim will be so tied into the ineligible concept that they cannot be examined under step two for an inventive concept. Identify which elements can be utilized, and create an argument that these elements are unconventional and therefore comprise an inventive concept.

This is not a Section 103 analysis: To show that an element is conventional, the examiner should not perform a prior art search. Elements are found to be conventional not because they are found in the prior art (prior art is sometimes not conventional), but because it meets the standard established at the patent office. If one could show that claim elements meets the requirements of Section 103 (they are not obvious), those elements would likely qualify as an inventive concept. But the reverse is not true: proving that claim elements are found in the prior art or are obvious does not prove them to be conventional (see our guidance).

Ordered Combination: If you can, you should argue that a single claim element is unconventional, and therefore prove that the single claim element constitutes an inventive concept. But even if all of your claim elements are individually well-known and conventional, it may well be that the combination of elements is unconventional. You should review our guidance and draft an argument on this issue the follows the logic of the Bascom case.

Argue additional claim elements improve computers or technology

As explained above, one of the arguments that can be made under step one of the Alice test is that the character of the claim is directed toward a technological improvement, or toward a solution to a technological problem. This same argument is relevant to step two of the Alice test. As is explained in our guidance on Improving the Computer or other Technology in a non-conventional manner, the Supreme Court has recognized that improvements to technology (including improvements to a computer) will constitute an inventive concept. Be sure to review this guidance and MPEP Section 2106.05(a), which provides a list of technology improvements that have been found to be an inventive concept by the courts, as well as a list of alleged improvements that failed to convince a court.

Arguments can be repeated from step one: The MPEP itself acknowledges that the arguments made related to the improvement of computers or technology are extremely similar under step one and step two:

Although the question of whether a claim improves computer-functionality or other technology may be considered in either step of the Alice/Mayo test (Step 2A or 2B), examiners are encouraged to resolve this question as early as possible in the eligibility analysis. ... Examiners are reminded that even if an improvement is not clear enough to demonstrate eligibility in Step 2A, it may still contribute to the eligibility of a claim in the Step 2B analysis.

MPEP Section 2106.04(a) (citations omitted). Note that the MPEP refers to step one of the Alice test as "step 2A," and step two as "step 2B" (step 1 in the MPEP is determining whether a claim falls within one of the four statutory categories). Since this is so clearly stated in the MPEP, it makes sense to present the argument under step one, and then remind the examiner that "even if an improvement is not clear enough to demonstrate eligibility" under step one, "it may still contribute to the eligibility of a claim" under step two.

Consider whether this argument applies to the claim as a whole: The MPEP seems to agree the same argument relating to improving computers or technologies can apply to both step one and step two. However, we know that step one examines the claim as a whole, while step two normally concerns itself with the "additional" claim elements outside the ineligible concept (see our discussion above). To the extent that the argument under step two applies only to elements not related to the abstract idea or natural phenomenon, it would be logical that the arguments made under steps one and two would be very different. Unless, that is, a claim can be considered "as a whole" under step two when attempting to find an inventive concept because of a technical improvement. While this conclusion does not seem very likely, this issue has not yet been fully resolved by the courts.

Refute characterizations that claim elements can't qualify as inventive concepts

Refute Characterizations: The What is enough for an inventive concept guidance describes some guidelines established by the courts and the patent office to determine which claim elements might constitute an inventive concept under step two. Most of these characterizations describe claim elements that are not enough for an inventive concept. One characterization, namely that relating to elements which improve a computer or other technology, is a positive characterization in that such claim elements do prove the existence of an inventive concept. Because of the importance of this characterization, this element was already described in a separate section above. The following characterizations are negative, and if made against your claims should be refuted if you are to prove the presence of an inventive concept.

"Apply it": The guidance on the "apply it" standard explains that an examiner can dismiss claim elements as being insufficient to show an inventive concept if they merely repeat the ineligible concept and say "apply it." If a rejection has characterized claim elements along these lines, it should be refuted where possible.

Generic computer components: It is unlikely that the mere presence of computer, a server, a processor, a network, or other generic computer hardware will be sufficient to constitute an inventive concept given the case law that has developed, at least when these elements are used for their normal purposes (see our guidance). If a special-purpose device is set forth in the claim and dismissed by the examiner as a generic computer element, however, this should be refuted. The response should explain the nature of this special device and its role as an inventive concept. Alternatively, it may be possible that the particular arrangement of these components provides the inventive concept (see Bascom). If your claim requires that software operate on two different servers, and the prior art only used one, your arrangement of these conventional elements may be unconventional and this could support a finding of an inventive concept.

High degree of generality: As explained in the guidance, the rule that elements with a high degree of generality should not be considered for an inventive concept has some overlap with the need to claim a particular solution as opposed to just the outcome, which was relevant to step one. We discussed the arguments that should be presented in connection with step one above. These same arguments should be made under step two to refute this characterization of your claims, and perhaps lead to a finding of an inventive concept under Electric Power and Intellectual Ventures v. Capital One.

Extra-solution technology: Our guidance on Insignificant, extra-solution technology, explains that there may be no real difference between this and the well-understood, routine, and conventional characterization discussed above. We suggest that, if you receive a rejection arguing that the additional claim elements are an insignificant, extra-solution activity, that you respond to the allegation is if the elements were described as well-understood, routine, and conventional.

Field of use restriction: As explained in our guidance on Field of use restrictions or technological environment limitations, the best way to argue against this characterization may be to follow the distinction made in MPEP 2106.05(h), and argue that your claim elements are integrated into the claim as a whole as was the case in Diamond v. Diehr.

Argue that the claims pass the Machine-or-Transformation test

In our guidance on the Machine-or-Transformation test, we explained that the M-or-T test remains useful for proving an inventive concept under step two of the Alice test. If possible, argue that the presence of a particular machine or a particular transformation in your process claim meets the requirements of the M-or-T test. If persuasive, the case law cited in the guidance should convince the examiner that your claim elements most likely contain an inventive concept.