Patentable Subject Matter after Alice:
Best Practices for Responding to 35
U.S.C. § 101 Rejections
By Michael S. Borella, Ph.D.
It has been over 20 months since the Supreme
Court handed down the landmark decision
in Alice Corp. v. CLS Bank Int’l, effectively
limiting the scope of patent-eligible subject
matter.1 In particular, software and business
method patents and applications now receive
a higher level of scrutiny under Alice than had
previously been the case.
In Alice, the Court set forth a two-
prong test for patent-eligibility. One must
first determine whether the claim at hand
is directed to a law of nature, a natural
phenomenon, or an abstract idea (collectively,
the judicial exceptions).2 If so, then one
must further determine whether any
element, or combination of elements, in the
claim is sufficient to ensure that the claim
amounts to something significantly more
than a judicial exception.3 Notably, generic
computer implementation of an otherwise
abstract process does not qualify as something
“significantly more.”4
The impact of this decision cannot be
underestimated - post Alice, approximately
70% of all patents challenged under 35 U.S.C.
§ 101 have been invalidated in district courts,
while the rate of § 101 rejections has exceeded
80% in some of the USPTO’s art units where it
was previously below 40%.5 As a consequence,
patentees have become increasingly concerned
about whether key patents in their portfolios
might be subject to an Alice challenge in
litigation, as well as whether their new
technologies are protectable.
Nonetheless, there are a few bright points
with respect to how one can navigate the § 101
waters post-Alice. Best practices are emerging
for prosecuting software and business method
inventions under this new regime. Many of
these are based on case law, and on guidance
provided by the USPTO in December 2014,6 as
well as January7 and July8 of last year.
When an applicant receives an Office
action containing § 101 rejections, the
natural response may be one of confusion
or frustration. This is not surprising because
the patent-eligibility landscape is anything
but clear.9 Nonetheless, it pays to analyze
the rejected claims, their specification, the
Office action, recent § 101 cases, and the
USPTO’s guidance. Doing so, and applying the
techniques below, can help you find a pathway
to allowance.
Interview the Examiner
It almost goes without saying that interviewing
examiners about rejections is usually
productive. This advice applies double to § 101
rejections. Like patent practitioners and judges,
examiners are struggling with understanding
the nuances of patentable subject matter. As
such, individual examiners, as well as different
art units, may have varying views on how the
Alice test should be applied. For instance, one
examiner indicated that any sort of processing
on a general-purpose computer held no
patentable weight, while another stated that
A review of developments in Intellectual Property LawWinter 2016 Vol. 14, Issue1
(continued on page 2)
Page 4
Federal Defend
Trade Secrets
Act Progresses
Page 8
Strategies for
Expediting the
Patenting Process
Page 6
The PTAB and the
Federal Circuit–
One Year Later
