Practical Steps for Patent Prosecutors Addressing 101 Rejections

For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a number of Federal Circuit decisions in the years since Alice, the United States Patent and Trademark Office (USPTO) has attempted to clarify the issue of patent eligibility for process claims. This article begins with a brief overview of subject matter eligibility and the guidance issued since 2014, and some practical suggestions for mitigating and addressing Alice-based rejections follow.

Subject Matter Eligibility

35 U.S.C. § 101, which pertains to patent eligibility of subject matter, states: “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Those conditions and requirements beyond patent eligibility relate to sufficiency of the disclosure and to novelty and non-obviousness of the claims.

Even when claims recite one of the statutory categories (i.e., process, machine, manufacture, composition of matter), a judicial exception to patent eligibility has been created for subject matter that is directed to an abstract idea (e.g., algorithm, method of computation, or other general principle), laws of nature, and natural phenomenon. In the Alice opinion, the Court repeated the concerns giving rise to these judicial exceptions, namely that monopolizing “basic tools of scientific and technological work” via patent rights or pre-empting these tools, may impede rather than promote innovation. The Court also reiterated the need to construe the exceptions carefully to ensure that inventions that simply involve an abstract concept are not rendered patent ineligible.

The Alice decision restated a two-step framework introduced in Mayo Collaborative Services v. Prometheus Laboratories, Inc. for differentiating patent-ineligible claims to judicially excluded concepts from patent-eligible applications of those concepts. The first step determines whether a claim is directed to one of the patent-ineligible concepts, and, if so, the second step considers whether the claim includes additional elements to transform the claim to eligibility by suggesting an inventive concept.

The application of the second step to software-based inventions became a stumbling block in the early days after the Alice decision, with some arguing that an inquiry into patent eligibility became conflated with a consideration of patentability without prior art. The fact that a showing of lack of pre-emption, the stated basis for the judicial exceptions, is not sufficient to overcome a challenge to patent eligibility based on the judicial exceptions only adds to the confusion.  

The turmoil resulting from Alice stemmed more from what the Court did not say, rather than from what it did say. While the Court analyzed the claims at issue under the two-step Mayo framework, it did not expound on software-based inventions generally. It also did not provide broader guidance to assess what would be deemed a sufficient transformation of patent-ineligible concepts recited in the claims. As a result, statements in Alice related to the analysis – like “the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention” or an observation that the claims at issue “do not, for example, purport to improve the functioning of the computer itself . . . [n]or do they effect an improvement in any other technology or technical field” – were applied broadly and, in the view of many, inconsistently in the early days after the decision.

Now, nearly a decade on from Alice, much of the initial chaos seems to have been quelled, thanks in large part to guidance and internal training provided by the USPTO.

Post-Alice Framework

The USPTO updated guidance, issued in October 2019, includes a flowchart that shows the two parts of the Mayo inquiry in the two prongs of the second step. The Guidance has since been incorporated into the Manual of Patent Examination Procedure (MPEP). In the software arena, the relevant inquiry at the first prong is whether a claim recites an abstract idea by including a mathematical concept, a method of organizing human activity, or a mental process. If it does, the second prong is reached and requires a determination of whether the claim recites additional elements that “integrate the judicial exception into a practical application.” How this guidance is leveraged when prosecuting cases can depend on various factors, some of which are specific to each case.

Practical Approaches

1. Use the resources that persuade Examiners

During prosecution, unlike in other procedures (e.g., in an appeal, post-grant proceeding, or litigation), a Federal Circuit opinion is often less persuasive than USPTO guidance or text of the MPEP. Thus, in determining what constitutes a practical application and a sufficient integration of the judicial exception into that practical application, the forty-six Examples summarized by the USPTO (referred to here as “Examples”) can provide a template for discussing Alice-based 101 rejections with USPTO personnel.

2. Draft Applications in consideration of Alice

When drafting a patent application that includes a processor performing some or all of the key operations of the claimed invention, include descriptions and claims that are designed to withstand post-Alice 101 scrutiny. In discussions with inventors, elicit as much information as possible about how the process is implemented and the role of the inventive process within a larger system or task (i.e., the “practical application”). Understand whether the processing device is modified:

  • Consider whether any aspect of the machine implementing the process is modified (g., the processor, memory, user interface), as compared with a generic computer, in order to perform the process or as a result of performing the process. In the artificial intelligence (AI) space, claims directed to designing or modifying the AI backbone (e.g., neural network) are viewed differently than those directed to simply using an off-the-shelf AI device and generally escape rejections based on the judicial exceptions, so long as the focus is made clear. The particular way that a machine learning algorithm is trained or the way that training data is obtained may be other avenues to successfully exit the patent eligibility analysis at the first prong or to establish eligibility at the second prong.

When an AI or generally processor-based invention is used to accomplish a previously manual task, gains in speed alone may not necessarily be helpful to patent eligibility, although, in some applications, a real-time solution based on a processor can be a basis for patent eligibility. If any problems associated with a conventional technique are addressed, include a discussion. If the problems involve scalability or convenience, discuss the effect of those on prior approaches and what the processor-based approach facilitates. Consider how the larger system or task is affected:

  • Consider whether the result is improved or more robust when compared with a result obtained by a person undertaking the task and, if so, capture the reason (g., intermediate filtering of data to modify further collected data, real-time update of some aspect of the process). Consider, too, whether an automated action is taken based on the claimed processing, although claiming such an action can sometimes implicate a different infringer.

Try to identify one or two of the USPTO Examples of claims found patent eligible that are analogous to the claimed invention (e.g., based on a similar abstract idea, based on a similar improvement to the overall system (i.e., a similar integration)).

  • In the Specification, explicitly discuss the improvement to the processing system, larger system, or task that is facilitated by the integration of the abstract idea. Including language from the analysis of the analogous Example can be helpful during prosecution.

3. Address a 101 Rejection using all available resources

A. Assess the Examiner and Art Unit, as well as the rejection. An interview with the Examiner can be invaluable in determining the most effective response to a 101 rejection. Discussing the Examiner’s view of the 101 rejection or understanding if the Examiner has any recommendations in response to proposed amendments or arguments can give a lot of insight into what it may take to overcome the rejection (or even elicit a specific suggestion).

For example, you may find that the Examiner does not necessarily disagree with your view of patent eligibility but wants Applicant’s position to be included in the record. Knowing this may avoid unnecessarily amending the claims. On the other hand, an interview may indicate that, in the Examiner’s view, the claims will stand or fall based on patent eligibility and give insights into whether an appeal should be considered. Based on a concern of conflating patent eligibility and patentability rejections, some advise discussing eligibility rejections after discussing art rejections during the Examiner interview.

Try to talk to a decision-maker. Quality Assurance Specialists (QASs) are practice experts in the various Technology Centers of the USPTO. In some Art Units, a QAS or Supervisory Patent Examiner (SPE) may weigh in on 101 issues in many, if not all, of their cases (e.g., for consistency). Exploring the possibility of including the right people in an interview can be done through a pre-interview call (even if you submit an Automated Interview Request (AIR) form for scheduling).

B. In the response, detail analogs between the claims at issue and one or more Examples that most closely relate to the claims. It’s unproductive to cite an Example and leave it to an Examiner, who is not likely to be an attorney, to identify and apply the relevant rule from the Example. The success of your response may hinge on how clearly you can present your view of the rule from the Example (especially when the subject matter of the Example claim and your claim differ) and how persuasively you can apply that rule to your claims. Previewing those arguments in an interview can help you ascertain aspects that may require additional explanation to aid the Examiner.

4. Keep up with developments – the ride has not come to a complete stop

Be cognizant that the issue of subject matter eligibility of software-based claims is not settled. The October 2023 Executive Order suggests that additional guidance may be issued regarding patent eligibility for Artificial Intelligence (AI) and other technologies. In January 2024, the Senate Judiciary Subcommittee on Intellectual Property held a hearing on patent eligibility in consideration of the Patent Eligibility Restoration Act, which seeks to limit the categories of subject matter deemed patent-ineligible.

Inventorship can be another issue affecting patent eligibility when AI is involved. For more insight into this aspect, see our key takeaways from the USPTO inventorship guidance for AI-assisted inventions.