Allowed but for Alice

When the Supreme Court decided Alice, it confirmed that subject matter eligibility under Section 101 was a substantive test that could be used to knock out and deny patents across broad fields of innovation.  The USPTO took the matter to such an extent that it re-reviewed all allowed cases at that point that had not yet issued, and withdrew many applications.  In fact, hundreds of applications were withdrawn from issuance and rejected under 101, a list of which is available thanks to a well-drafted FOIA request.  See Tristan Gray-Le Coz and Charles Duan's article

I reviewed many of the cases on the list to see how various Applicants were faring now, about a year later. Unfortunately, so far it seems that the results are highly depending on the Examiner, and less dependent on the strength and effectiveness of the arguments, or the facts of the case.  In the interest of full disclosure, my firm is handling one such case for a small client, pro bono (Serial No. 13/163,585, which was also highlighted by Grey-Le Coz and Duan’s article on the PatentlyO blog). 

One example, US 12/894,527, is directed to an integrated global shipment system that provides end-to-end visibility of the movement of a package, assigned to UPS and prosecuted by Alston & Bird.  Like every case I have reviewed from the list, the Rejection after withdrawal from issuance follows the same boilerplate rejection paragraph:

In the instant case, the claims are directed to a [insert generalized summary of the claims].   Performing [insert the generalized summary of the claims] is [select one of a fundamental economic practice, idea of itself , mathematical equation, …] and therefore the claims include an abstract idea.   The claims do not include limitations that are “significantly more” that the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.  Note that the limitations of the claims, such as [insert whatever is left beyond that sounds like generic computer steps] are mere instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry. 

Given that every one of these applications was allowed in view of the Examiner’s prior art search and analysis, it seems unlikely that in every case only conventional computing technology was at play.  Indeed, in this first example, the rejected claim 1 set forth below appears to have many unconventional components.  While these can surely be implemented in a generic computer, the computer would need to have many unconventional features added to it. 

Currently, after the case was withdrawn from issuance, the Applicant responded to the first non-final rejection with a well-drafted set of arguments going through the two-step Alice analysis.  The Applicant provides a good example of how to address the rejections for failing the consider the claims as a whole, and for explaining that the claimed concept does not fall into one of the example categories of an abstract idea set forth by the Supreme Court, and how even if it were, it provides something more.   

The USPTO then issued a Final rejection disagreeing with the Rejection and Applicant has filed an RCE.  The Examiner has now issued a new rejection, maintaining the 101 rejection and adding a double patenting rejection.  

A potential weakness of pending claim 1 is that it merely sets forth a web portal with generic computer structure “configured to” carry out certain functions, in combination with a shipment database.  As we have seen lately, relying on functional elements in a claims can be dangerous. Internet Patents Corp. v. Active Networks (Fed. Cir. 2015).  It could be argued that all of the limitations relied on in Applicant’s arguments are mere functional language.