The Problem/Solution Approach to Alice

How to best deal with Alice-based rejections from the USPTO is a complex task due in part to the generally difficult problem of applying the Supreme Court's two-part test to individual cases. The USPTO's case-by-case approach and related guidelines have been widely criticized (e.g., here) as only muddying the waters. The USPTO recently (Feb. 2016) provided some updated training slides to illustrate how to apply the Alice framework to examples, showing how potential amendments can overcome the rejections.

An interesting aspect of these slides is how they frame the issues - starting out with the question of "what did Applicant invent?" In the examples provided, the answer to this question guides (or perhaps even dictates) the ultimate answer to whether a particular claim is patent eligible under Section 101 as providing "something more," at least according to the USPTO's current thinking.

Looking to "Example 21," it relates to a process for generating customized stock quotes and alerting a remote subscriber that the quotes can be accessed from their computer. Without going through the whole analysis, part of what the Applicant invented was identified as the process including transmitting the data filtered and formatted data blocks of stock quotes to a subscriber's wireless device.  When the wireless device is connected to the computer, it causes the computer to auto-launch a stock viewer application to display the alert and provide access to more detailed information.

The training materials first examine a claim that omits any substantial details on the wireless device and stock viewer application or how the connections are made to provide the operation noted immediately above.  The original claim 1, set forth below, is said to be ineligible:

However, an amended claim is also provided in the training slides.

The training slides explain that these added limitations relate to "what the Applicant invented" in terms of solving a particular Internet-centric challenge of alerting a subscriber when their computer is offline with a claimed solution necessarily rooted in computer technology. Thus, by tying additional claim elements (beyond the abstract idea) to the particular technical problem of actually generating the alerts, the claim becomes eligible as providing "something more."

While of course one can play infinite mischief as to how the abstract idea is defined in the first place, it still seems that utilizing a technical problem-solution approach can be helpful for illustrating subject matter eligibility, particularly related to the issue of claiming "something more."