The Anatomy of a Bogus Alice Rejection

RejectedI know there are a lot of good patent examiners at the Patent Office, and my guess is that if most patent examiners knew what was passing for an Alice rejection they would be both shocked and embarrassed.

The typical Alice rejection given by a patent examiner is about as bogus and intellectually dishonest as anything you could possibly imagine. See Are examiners instructed to issue frivolous rejections? This is widely known and understood by those who practice in the area, and I suspect it is well known within the Patent Office. But rather than simply call Alice rejections bogus let’s take a look at what passes for “logic” within an Alice rejection.

After a complete reversal by the Board, on June 14, 2016, Application No. 12/904,217 was reopened for prosecution. On March 2, 2016, the Board had reversed the examiner with respect to all claims, finding the obviousness rejections inappropriate. Undeterred, TC Director Rinaldi Rada ordered prosecution reopened to issue Alice rejections.


A Typical Alice Rejection

In the Office Action reopening prosecution after a victory at the Board, the patent examiner explained:

The claims do not include addition elements that are sufficient to amount to sufficiently more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea and are simply a generic recitation of a computer and a computer network performing their generic computer functions. The claim amounts to no more than stating create a sales transaction on a computer and send it over a network.

A rejection like this is abusive whenever it comes, but that TC Director Rada specifically authorized it after a complete victory by the applicant at the Board is hard to justify.

Let’s pick this examiner “logic” apart piece by piece.


Circular Logic: Abstract Because it is Abstract

First, this type of circular “logic” is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial exception (which in this case is an abstract idea) because the additional elements add no more than the abstract idea. In other words, the examiner says there is nothing significantly more than the abstract idea because there is nothing more than the abstract idea.

This type of Alice rejection, which is very common, is structurally the same type of dismissive directive parents give to small children all the time. It goes something like this:

Mother: “Don’t play in the street.”

Child: “Why?”

Mother: “Because I’m your mother and I said don’t play in the street.”

The Alice equivalent of this “how dare you ask me, I’m your mother” simply says what you’ve claimed is abstract because it is abstract, period. Clearly, a conclusory rejection like this without any real explanation does not satisfy the examiner’s prima facie burden to articulate a valid reason to reject. After all “because” is not a reason.


What About Enfish?

Second, Enfish says that the fact that an invention runs on a general computer does not mean that the claims are patent ineligible. Enfish guidance was given by the USPTO to examiners 4 weeks prior to this Office Action, but doesn’t seem to be applied or internalized by the examiner, or TC Director Rada.

Excuse me from thinking that if Enfish had reached a contrary conclusion it would have been cited it to support the rejection. Ignoring decisions that support the applicant is a way of life in certain Art Units at the Patent Office.


Clearly NOT a Generic Computer

Third, the claims clearly are not the mere recitation of a generic computer or computer network. The invention claims an authentication process to make sure a wireless customer has authority to purchase something and charge it to the customer’s account, such as while playing a game on a mobile device. Clearly, a generic computer or computer network doesn’t offer that functionality unless there is a program installed that so directs the machine to provide that functionality. So it is insulting, at best, to pretend that the claims cover a generic computer or a generic computer network. That is simply false.

If the examiner doesn’t understand what is being claimed here then she shouldn’t be examining applications dealing with computer technologies.


Just a Sales Transaction, Really?

Finally, concluding that the claims amount to no more than “stating create a sales transaction on a computer and sent it over a network”, is practically fraudulent.

I realize that patent examiners do not read the specification. I realize that in the time I’ve reviewed this application to write this article I’ve spent more time reviewing the specification than the examiner likely did. But you simply cannot reject an applicant because you choose to ignore the specification and instead pretend that the words used in the claims are somehow disembodied from any greater meaning or explanation. [1]

We all know patent examiners do not read the specification. Examiners admit they don’t read the specification and focus only on the claims because they don’t have time to read the specification. But the fact that examiners are not reading the specification, which is obvious from virtually any Office Action you receive, isn’t the applicant’s fault. The specification is required and the terms and concepts defined in the specification legitimately (and legally) impart meaning into the claims. Applicants are allowed to be their own lexicographers, can define in the claims their own invention in whatever terms they choose with any specialized meaning being set forth in the specification. See MPEP 2173.01. Simply stated, it is impossible to perform a legally competent interpretation of the claims without thorough consideration of the specification.

If only the patent examiner would have read the ‘217 application she would have realized the claims cover more than a generic sales transaction over a network. Without reading what the applicant files and instead reaching absurd and unsupportable conclusions is a travesty of justice. That such an absurd rejection comes only after a complete reversal by the Board makes it seem vindictive and harassing.

When you don’t read the specification you cannot possibly understand the innovation and any claim interpretation will be hopelessly wrong. Still, the examiner concluded that the claims were so defective on their face that the decision of the Board had to be ignored and prosecution reopened.

But if the claims were that defective shouldn’t the Board have noticed?

Should examiners who are not lawyers be routinely ignoring rulings from the Board, which is made up of a distinguished panel of three Administrative Patent Judges who are lawyers? If a panel of three expert APJs on the Board didn’t notice a problem with the claim should a single patent examiner be able to essentially overrule the Board and substitute her own decision for that of the Board? That doesn’t strike me as an appropriate way to run an administrative agency.


Why Didn’t the Examiner Reject Earlier?

If the claims merely covered “stating create a sales transaction on a computer and sent it over a network,” as the examiner claims, then the claims would have lacked patentable subject matter even under Bilski v. Kappos. But the examiner did not reject the claims under Bilski, which the Supreme Court decided in June 2010, which was over 18-months before the first non-final rejection issued by the examiner in January 2012. In short, if this examiner really thought these claims only covered a generic sales transaction over a network she had ample opportunity to reject the claims as lacking patent eligibility well before now. Instead, this bogus “reasoning” is applied and Alice cited only after she has been completely reversed by the Board. How convenient!

The fact that this rejection wasn’t given before makes it feel like this is just part of a larger war of attrition against certain patent applicants. Stretch out the prosecution for as long as possible and eventually they will go away, which unfortunately is exactly what typically happens.


No Improvement Means it is Abstract?

The most insulting aspect of this rejection is where the patent examiner concludes, without anything other than her opinion, that the claimed invention does not improve the technology or technology field, or to the functioning of a computer itself. The examiner says the lack of an improvement supports her conclusion that the claims are abstract.

Putting aside the absurdity of calling a payment gateway abstract, is it actually possible a novel and non-obvious invention to be abstract? The Board has already reviewed these claims and has found the examiners obviousness rejections to be inappropriate. So how is it possible that something that has been claimed concretely enough to evaluate for novelty and non-obviousness could ever be abstract?

I realize that both the Supreme Court and Federal Circuit have found it unnecessary to define the term abstract, but it is actually defined as: “thought of apart from concrete realities, specific objects, or actual instances: an abstract idea.”

If a claim is so separated from “concrete realities” and “specific objects” how could this examiner have ever evaluated whether it was novel and non-obvious? How could the Board have concluded that it was non-obvious and that the examiner was wrong?

Furthermore, are we really supposed to believe that any patent examiner could think a new and improved payment gateway that verifies that the party seeking to charge an account actually has authority to charge the account during in-game play isn’t an improvement? I’d think even the most befuddled and sheltered among us would be familiar with growing problem of identity theft and the need to have verification systems. The importance of a convenient payment gateway that verifies purchases but which isn’t so cumbersome that it deters commerce would seem self-evident. Apparently not.

In the real world collecting money and getting paid are not abstract concepts. Creating an electronic system that verifies that the person trying to authorize the transaction has authority to bill that transaction to a mobile account streamlines the purchase and billing processes, which results in MORE commerce. Clearly, this improves the functioning of payment systems and it is perplexing how anyone who works with computer technologies couldn’t understand that.

This leads me to wonder, does this patent examiner think that vendors getting paid and a system that facilitates increased levels of streamlined commerce are abstract? I wonder whether she has direct deposit and considers the system that puts money into her account on payday is abstract. I bet she understands that her getting paid is a tangible concept, as are the funds that arrive in her account. I bet if a paycheck were to mistakenly get routed to another account because of a failed verification that wouldn’t feel so abstract.



Simply stated, there is nothing abstract about this innovation, yet in the infinite wisdom of both the patent examiner and TC Director Rada, this claim is so defective on its face that they needed to save the public from the incompetence of the Board.

Funny, the Board seems to be comprised of the most brilliant legal minds on the planet when they are stripping patents away from patent owners. Odd how the same Board all of the sudden becomes a bunch of blabbering impotent idiots when they don’t see any valid reason to prevent a patent from issuing to an applicant.


[1] This is not to suggest that I think any fair reading of the claims could lead an intellectually honest examiner to reach this absurd conclusion. But if this examiner had read the specification to learn what the innovation is there would be no way she could have reached this ridiculous conclusion.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

15 comments so far.

  • [Avatar for Prizzi's Glory]
    Prizzi’s Glory
    August 1, 2016 07:45 am

    USPTO top management has many generally unlawful and sometimes illegal ways to thwart a patent applicant. Maybe Michelle Lee and her cohorts are worried that if any of these TC 3600 patent applications get into the CAFC or into the District Court of the Eastern District of Virginia, USPTO behavior might attract too much attention or the District Court might authorize the patent.

    I discuss TC 2400 101 behavior to kill an application in my comment on Rania Haque’s blog post entitled “Breaking through the culture of Examiner v. Applicant at the USPTO”.

    It is important to understand USPTO corruption and criminality in the overall USPTO environment as well as at the individual TC level.

    Below are bogus TC 2400 101 rejections from Examiner Steven HD Nguyen. I think they are similar to many of the rejections that have been applied in TC 3600, but in this case they are applied to a statutory networking device, which is a type of hybrid bridge router.

    After the claims, I have included one of the CRM claims (Claim 40 which is in fact a device claim drafted as a CRM claim), and the new bogus 101 rejection that the APJs introduced and that goes against everything in MPEP 2111.02.

    The APJs ignored basic English grammar and punctuation (matters of law) to make this new bogus rejection. Such purposeful obliviousness to matters of law are of course no big deal for APJs that elsewhere in the Decision violated 18 USC 1001 and 18 USC 371 by lying collectively on a US government document almost certainly at the orders of USPTO Top Management under SAWS-like procedures.

    There seems to have been something of a cover-up of this PTAB decision, for it was never made public in the FOIA Reading Room even though the ‘161 Application was public.

    Claim Rejections – 35 USC § 101

    6. 35 U.S.C. 101 reads as follows:

    Whoever 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.

    7. Claims 1-2 and 5-41 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claims 1-2 and 5-41 are determined to be directed to an abstract idea. The rationale for this determination is explained below:

    8. for patent-eligibility purposes, it is important not to just look at the type of claim but also to the underlying invention. Bancorp Servs. LLC v. Sun Life Assurance Co, 103 USPQ2d 1425, 1432 (Fed. Cir. 2012), citing CyberSource Corp. v. Retail Decisions, Inc, 99 USPQ2d 1690, 1697 (Fed. Cir. 2011]. “[T]he form of the claims should not trump basic issues of patentability” such that “a machine, system, medium or the like may be equivalent to an abstract mental process for purposes of patent eligibility.” Bancorp at 1432.

    9. The present invention enables a user to selectively group input/output devices into one or more logical bridges and to selectively connect the bridges with one or more logical routers. See Substitute Specification at page 5. In particular, the specification describes that two software routines, depicted in FIGS. 8 and 12, enable a user to configure a bridge/router as desired. See Substitute Specification at page 7. These routines are used to create and fill the fields of the data structures shown in FIGS. 9-11, which control the current configuration of the bridge/router. See Substitute Specification at page 7. The configuration routine described in FIG. 8 allows the user to select all of the user-selectable configuration values contained in the data structures of FIGS. 9-11 and store these values in memory. See Substitute Specification at page 8. The present invention allows the bridge to operate at data link layer and the router to operate at network layer. See Substitute Specification at page 21. Therefore, the claims involve the use of an abstract idea: associating input/output devices of a network device to bridges/routers and using the association to permit a bridge/router to operate at a particular software level. Accordingly, it must be determined whether the claims incorporate sufficient meaningful limitations to ensure the claims are more than a drafting effort designed to monopolize the abstract idea itself. See Mayo-Collaboration Servs. v. Prometheus Labs, Inc. 132 S. Ct. 1289, 1297 (2012). These limitations must amount to more than “well-understood, routine, conventional activity.” id at 1298.

    10. Independent claims 1, 17-23 and 38-40 each recite “at least one processing unit” and “memory” for implementing the functions of the device. Such hardware components are routine hardware found in any general purpose computer. As stated in the specification, the claimed functionality could be implemented using any combination of programmable devices and memory. See Substitute Specification at 7. While the claimed invention requires the use at a digital computer to operate, any general purpose computing system will do. Implementation of an abstract idea “on a general purpose computer is not a meaningful limitation where there was ‘no substantial practical application except in connection with a digital computer.'” SAP America, Inc. v. Versata Development Group, Inc, 107 USPQ.2d 1097, 1110 (PTAB 2013), citing Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). Since the abstract idea has no practical application except with a general purpose computer, the recitation of general purpose computer components (processing unit and memory) represents well-understood, routine, conventional hardware that fails
    to provide sufficient meaningful limitations on the abstract idea.

    11. Further, each of the independent claims also recites “a plurality of input/output devices.” As described in the specification, known LAN/WAN devices can be used to implement the claimed input/output devices. See Substitute Specification at 6. Such devices are conventional components in network devices for communicating with other network devices. In order for a network device to communicate with other network devices, it must necessarily contain input/output devices. Components that must be used to implement the abstract idea itself are well-understood, routine, conventional components and do not provide a meaningful limitation on the abstract idea. See Mayo, 132 S.Ct. at 1299 (stating “steps that must be taken in order to apply the laws in question” are “well-understood, routine, conventional activity”). Therefore, since a network device that would implement the abstract idea necessarily contains an input/output device, the input/output device is not a meaningful limitation beyond the abstract idea itself.

    12. The independent claims also recite the processing unit creating/generating data structures and responding to the data structures. Such limitations, however, are conventional, routine activities “that are a consequence of implementing the abstract idea.” See SAP America, 107 USPQ.2d at 1111. As such, they do not reflect meaningful limitations beyond the abstract idea itself.

    13. Independent claim 17 also includes the additional limitation of a user interface for accepting the user selected configuration information. However, all general purpose computers require same type of interface to interact with the user. As described in the specification, the user interface can be implemented with a “standard terminal” having a screen and a keyboard. See Substitute Specification at page 7. As detailed above, the recitation of general purpose computer components does not place a meaningful limitation on the abstract idea. Incorporating such well-understood, routine, conventional activity class not place a meaningful limitation on the abstract idea.

    14. Because independent claims 1, 17-23 and 38-40 are directed to no more than a patent-ineligible abstract idea, independent claims 1, 17-23 and 38-40 are directed to non-statutory subject matter. Further. dependent claims 2, 5-16, 24-37 and 41 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the
    claims are not directed to an abstract idea. In particular, the additionally recited limitations are directed to data stored in the memory and, therefore, do not provide meaningful limits on the abstract idea to reduce it to a practical application.

    Here is a Computer Readable Medium (CRM) claim that received a new 101 rejection from the APJs. (I am not sure how to indent best for readability.)

    40. (Currently Amended) For use with a network switching device having a plurality of input/output devices, a non-volatile computer memory storing software instructions that direct a processing unit to configure the network switching device and to operate the network switching device once configured, the software instructions including:

    at least one [a] configuration routine that:

    defines one or more logical bridges, wherein each of the one or more logical bridges includes one or more ports that provide one or more connections to a logical bridge,

    selectively associates each of said input/output devices with a selected one or more of said logical bridges, and

    creates one or more data structures that represent which input/output devices have been associated with each logical bridge; and

    at least one [a] bridging routine that responds to said one or more data structures by creating said one or more logical bridges with which one or more input/output devices have been associated to operate as one or more separate media access control level bridges including, and having a port for, each of the input/output devices represented as being associated with such logical bridge by said one or more data structures,

    whereby execution of the configuration routine creates the one or more data structures and execution of the bridging routine operates the one or more separate media access control level bridges.

    The APJs upheld the Examiner with the following bogus 101 rejection.

    With respect to independent claim 40, we find this claim to be broader (different) than independent claim 23 (reciting a configuration routine and bridging routine in the body without any associated hardware devices). We find the preamble of claim 40 sets forth a device, but the body of the claim, as a whole is directed to “software instructions” without any recitation of tangible or non-transitory medium. We find Appellants’ general arguments to be unpersuasive of error in the Examiner’s finding that claim 40 is directed to an abstraction and non-statutory subject matter. Therefore, we find claim 40 to be directed to software per se which is an abstract idea. Consequently, we sustain the Examiner’s rejection of independent claim 40 as directed to non-statutory subject matter.

  • [Avatar for KF]
    July 31, 2016 04:15 pm

    Re LTE’s post, once again I repeat my previous assertion about examiners not being able to follow an argument or fully understand what they are reading — technical or otherwise. Reading comprehension and debate skills NEED to be required as much as, if not more than, technical skills to work as an examiner.

  • [Avatar for Curious]
    July 29, 2016 01:41 pm

    See what’s really going on in these art units.
    I’ve said it before, and I’ll say it again. I believe that the blight of TC 3600 is a top-down initiative. Given the near universal extrajudicial treatment of the patent applications in the business method portion of TC 3600, it can only be something initiated by someone(s) very high up the USPTO. That being said, another problem with 3600 is that all the newer/newish examiners are getting an entirely warped view of what is patentable (or not) and how an application is supposed to be examined. As such, even if the anti-patent directives from the top were to suddenly stop, we still have to contend with a great number of examiners who don’t know how to properly examine a patent application because of the way they were (improperly) trained.

    While the blame certainly belongs with the top hierarchy at the USPTO, the rot has permeated throughout the entire system.

  • [Avatar for Tom Bassolino]
    Tom Bassolino
    July 28, 2016 08:06 pm

    Great article. I am looking forward to your presentation tomorrow at the NAPP conference in the “lion’s den.”

  • [Avatar for Simon Elliott]
    Simon Elliott
    July 28, 2016 06:22 pm

    i respect that the USPTO is supposed to only issue valid patents, and that there should not be a total bar to reopening examination after a successful appeal. I also understand that the Examiners have pressure for production. At the same time, the USPTO has an obligation to “compact prosecution” and should respect the finite budgets and patience of small companies trying to get a patent. If this was a court proceeding, the judge would throw out the new 101 arguments as being untimely and prejudicial. I think that the PTO needs to have some internal controls to stop this sort of thing.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    July 27, 2016 03:18 pm

    Long time examiner not in 3600 @4

    The issue is not whether or not this claimed invention is obvious or even if it’s statutory. This issue is the superficiality of the rejection.

    It’s not the examiner’s fault. Primary examiners in the business method art units (3620, 3680 and 3690) have told me that they are no longer bothering with serious examination because their SPE’s won’t let them allow cases unless “there’s something physical involved”.

    The SPE’s for their part, have told me they will not willing to stand behind the prior allowances of their examiners. Their excuse is “the guidance keeps changing”.

    The PTAB judges are unwilling to apply a 2 part Mayo test when they reverse a business method 101 rejection.

    Examiners are universally reopening 101 reversals because there is no 2 part Mayo test.

    Allowances have been pulled. Long time examiners have been reduced to tears. Is it any wonder office action quality in these art units has plummeted?

    I invite you to call the primary examiner in this case and ask her how life has been since the Alice decision. Ask her why she is reopening reversals. Ask her why she hasn’t allowed a case in two years. Ask her what happened to the cases she did allow in April, May and June of 2014 once the Alice decision came out.

    See what’s really going on in these art units.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 27, 2016 02:20 pm

    Thanks for the laugh Step.

    The first line puts their entire analysis (if you can call it that) into perspective. I apparently don’t know how software works. I love hearing that from a bunch of people who actually think (and say with a straight face) that software is math. And I’m the one who doesn’t understand software. LOL.

    I also love the reference to the tweet where someone with almost no followers asked me what part of “abstract” I didn’t understand. Perhaps someone needs to tell these jokers that the term hasn’t been defined and the courts have been rather proud in their arrogance about not defining the term. So “abstract” means all things to all people while meaning nothing useful in particular.

    I can’t get too upset though. When loons like TechRights go after me that has to mean I’m doing something right. I’d actually have to substantially rethink everything if they ever agreed with me.

  • [Avatar for Jeff Lindsay]
    Jeff Lindsay
    July 27, 2016 11:10 am

    Well said, Gene. This USPTO problem is a blight on innovation in the U.S. and needs more public outcry to be corrected. Thanks for your detailed analysis.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 26, 2016 04:17 pm

    One more thought long time examiner not in 3600….

    Let’s assume you are correct that you found a knock out reference in only 15 minutes on Google Patents. That would suggest that the examiner, SPE and Board are extraordinarily incompetent.

    Interesting how you chose to lash out at me when you thought you found a knock out reference rather than those at the Office who clearly should have been able to find and apply that so easy to find reference.

    Time to look in the mirror Mr/Ms long time examiner not in 3600. I’m not the problem. What is going on at the PTO is rotten!

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 26, 2016 04:14 pm

    Long time examiner not in 3600-

    Even in comments to a blog I guess all you can expect from some examiners is garbage.

    Where in your “knock out reference” does the disclosure discuss verification? I can answer the question if you like… NOWHERE. So your comment is just the typical examiner garbage that patent attorneys have to deal with every day. You find something that generally relates to wireless payments so you jump to the conclusion that it is a knock out reference. Did you even read the “knock out reference”? Did you even read the application?

    Further, I find your comment particularly asinine. You seem to want to pretend that this application merely adds the trivial step of knowing a person’s id. That, of course, misses the entire point. The entire invention, including all the claims, is about verification. Knowing that the particular device is authorized to engage in the transaction is not what you describe in such a condescending way.

    As for your jab at me, about “finally” mentioning an application number. I’m really not sure what to make of that since I’ve been mentioning example after example where examiners are engaging actions that are only intended to harass applicants. Perhaps you should go back and read the articles. If you don’t think I’ve given examples you obviously haven’t read what I’ve been publishing any more than you read the specification in the applications you examine.


  • [Avatar for A long time examiner not in 3600]
    A long time examiner not in 3600
    July 26, 2016 02:14 pm

    My inner thoughts:

    -What’s Gene’s riled up about this time?
    -Oh my, he finally mentioned a specific application number.
    -Let’s pull that up.
    -Hmmm, a HTTP/USSD gateway. HTTP was early 90s, USSD was 96 surely a generic http/ussd gateway by 1998-2000, and probably specific to charging/billing shortly after.
    -Wonder what the date on this thing is…
    -2010? AHAHAHAHAHA. Oh my, 3600. How did you get to the PTAB on this case.
    -Wait a second, why is 3600 examining this? This has nothing to do with 3600. It’s HTTP/USSD protocol conversion.
    -Let’s do a quick 15-min google patent search….
    -Oh look WO 2004010393. A slam-dunk primary reference that does everything but say “oh btw, the ss7 signaling protocol between the PCCS and prepaid platform could be USSD; and like… you need to know the person’s id and amount to charge”.

  • [Avatar for Kevin R.]
    Kevin R.
    July 26, 2016 12:14 pm

    The consistent failure of the examining corp to meet the burden of establishing a prima facie rejection under 101/Alice astounds me. Such apathy indicates that the USPTO does not want to advance prosecution. They “hide the ball.”

    Policy mandates that (Mayo Part I) the Examiner identify and articulate (a) what the claim is “directed to” and (b) why that should be considered “abstract.” The ONLY way to do that is by comparing what the claim is allegedly “directed to” to court precedent (i.e., the Examples). It’s not a “judicial exception” to patent-eligible subject matter until a judge actually says so! It is not a prima facie rejection without the examiner comparing the subject matter to a precedential example of an abstract idea.

    Once that is asserted properly, the Examiner can then evaluate if there are [in]sufficient additional elements, using only generic computer, applying well-known concepts, and/or [a lack of] improving the technology considerations (Mayo Part II).

    It would be bad practice for an applicant’s representative to discuss the claims, cite the spec, or propose an amendment on the record and risk limiting the claims in the future.

    The USPTO needs to better guide the examiners to frame potential Alice issues in a way that promotes productive discussion and amendment, i.e., asking the examiners to consistently meet their burden to clearly articulate some semblance of rationale behind the rejection.

  • [Avatar for Ternary]
    July 25, 2016 01:54 pm

    An abstract idea, according to the USPTO again and again, is an invention of which its assumed intent (not its implementation or realization) is rephrased by an Examiner to have some economic impact and is comparable to a human action. This subjective “because I said so” rejection as analyzed by Gene in this post is extremely difficult to overcome, as also illustrated and analyzed in recent other IPWatchdog posts. Alice is rapidly establishing a grotesque and ridiculous anti-science, anti-technology, bogus-intellectual reputation of certain Technology Groups and the PTO in general. This is not in the interest of patent owners.

    The PTO, with its capability to provide a “second pair of eyes” (see Gene’s recent post on the subject) should make available Alice expert Examiners whose responsibility it is to assist Applicants who only have a 101/Alice rejection remaining in a case, to bring the application in condition for allowance. This will also go a long way for the PTO to demonstrate that it is not the US Anti-Patent Office and is serious about patent quality.

  • [Avatar for 3600 observer]
    3600 observer
    July 25, 2016 12:23 pm

    Looking at pages 2 and 3, the ONLY analysis in the Examiner’s analysis is the assertion “[t]he claims are directed to the abstract idea of sales transaction.” The remainder is boilerplate.

    Interestingly enough, on page 4, the Examiner admits “the claims do not explicitly recite ‘sales transaction.'” The Examiner then reproduces a good portion of the limitations of claim 1 and asserts that these describe the “concept” of a sales transaction. There are two problems with the Examiner’s analysis. First, as stated by the Supreme Court, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'” but this does not make the invention necessarily “directed to” the abstract idea. From just a cursory look at these limitations — none of which appear to be necessary to implement a sales transaction — the limitations do not appear to be “directed to” a sales transaction. While they apparently involve a sales transaction, they don’t appear to be directed to one. Another problem with the Examiner’s analysis is all the ellipses (i.e., “…”) the Examiner employed when describing what the invention is directed to. By omitting many limitations, the Examiner’s analysis failed to consider the claimed invention, as a whole.

    All in all, this is classic BS examination out of TC 3600 as to Step 1 of the Mayo test: (i) abstract the invention down to a few words (i.e., “a sales transaction”), (ii) declare the abstraction to be abstract, (iii) while using a shotgun approach, declare that the abstraction is “similar to” the abstract ideas of multiple different cases [in this situation, the Examiner cited 8 different cases in addition to Bilski and Alice] without any attempt to compare the specific facts in the cited cases to the facts of the application.

    That was Step 1 of the Mayo test. Step 2 of the Mayo test is described on pages 5 and 6. Consistent with the dreck I see coming out of TC3600, this analysis makes a passing mention to “a computer and a computer network” but the remaining limitations (not directed to the abstract idea) are completely ignored. On page 6, the Examiner completely disregards whatever additional contributions the dependent claims add with a completely conclusory statement.

    This is ALL typical. With enough practice, I’m sure most Examiner’s can knock out this type of action in about 30 minutes with most of that time being employed doing “cut and paste.”