Alice Rejection Response

Step 0 — Read the Rejection Carefully

• Identify exactly which step the examiner rejected at (Prong 1 or Prong 2 of Step 2A; or Step 2B)
• Identify which abstract idea grouping the examiner cited (mathematical concept; mental process; certain methods of organizing human activity)
• Determine if the examiner correctly identified the abstract idea or is applying a strained interpretation of the claim

Step 1 — Determine if the Claims Even Recite an Abstract Idea

• Under the 2019 Revised Guidance, examine whether the claim recites a concept in one of the three specific groupings: mathematical concept (formula; equation; calculation; mathematical relationship)
• Mental process (something that can be practically performed in the human mind or with paper and pencil)
• Certain methods of organizing human activity (economic practices; commercial interactions; managing relationships or behavior)
• If the claim does not fall into any of these three categories → argue the claim is NOT directed to an abstract idea → eligible

Practical Application Indicators (Mpep 2106.05)

• Improvement to the functioning of a computer or other technology
• Reflects a particular practical application of the abstract idea
• Applies or uses the abstract idea in some other meaningful way beyond generally linking it to the claimed field
• Particular machine integral to the claim (not merely a general-purpose computer)
• Transformation or reduction of a particular article
• Medical/diagnostic claim applying natural relationship in a meaningful treatment step

Step 3 — if no Practical Application, Assess Significantly More

• Additional elements beyond the abstract idea
• Specific non-routine
• Unconventional technical steps
• Non-generic hardware or software specifically configured for a technical purpose.

Argument 1 — Technical Improvement to Computer Technology

• The strongest Alice argument
• The claims are directed to a specific technical improvement to the functioning of the computer system itself
• This argument is supported by: Enfish, LLC v. Microsoft (Fed. Cir. 2016): claims to a 'self-referential' database table improved computer memory efficiency and search speed
• Eligible because they improved the functioning of the computer
• DDR Holdings v. Hotels.com (Fed. Cir. 2014): patent-eligible because claims addressed an Internet-specific problem in a way that was not merely applying an offline concept to the Internet
• McRO, Inc. v. Bandai Namco Entertainment (Fed. Cir. 2016): specific rules for automatically synchronizing animated characters' lip movements to audio were eligible — the ordered combination produced a technical improvement to animation
• Core Wireless Licensing v. LG Electronics (Fed. Cir. 2018): claims to a specific improved user interface for small-screen devices were eligible technical improvements

How to Make This Argument

• Articulate in the response what specific technical problem the claims solve
• Describe the specific technical improvement (reduced computation; improved memory usage; faster processing; reduced network traffic; better security)
• Include citations to the specification sections that describe the technical improvement
• Distinguish from cases that merely automate an existing process

Argument 2 — Specific Technical Elements not Performable in the Human Mind

• If the method involves data processing at speeds or scales impossible without a computer, it is not a 'mental process'
• Argue that the specific technical operations claimed cannot be practically performed by a human mind
• Example: 'real-time processing of 1 million network packets per second to identify anomalies' cannot be done in the human mind

Example

• Add 'wherein execution of the method reduces memory allocation by at least 30% compared to prior art approaches by performing in-place operations on a circular buffer'
• The specific technical improvement language ties the claim to the specification's technical disclosure

Amendment Approach 2 — Add Non-generic Hardware Specificity

• Replace 'a processor' with specific processor types that are integral to the claimed invention
• 'a graphics processing unit (GPU) configured to parallelize the matrix multiplication operations'
• 'a field-programmable gate array (FPGA) implementing the filtering algorithm in hardware logic'
• 'a neural processing unit (NPU) configured to perform sparse matrix operations'
• These hardware elements must not be merely 'incidental' to the abstract idea

Amendment Approach 3 — Add Specific Data Types and Structures

• Specify what type of data is being processed (not just 'data' or 'information')
• 'video frames at 4K resolution captured at 120 fps'
• 'medical imaging data in DICOM format'
• 'network packets in HTTPS encapsulated format'
• 'sensor data from an accelerometer sampled at 1 kHz'

Amendment Approach 4 — Add Ordered Technical Steps

• If the claim had steps in a non-specific order, add ordering language that reflects the technical dependency
• Specify how the output of one step feeds the next
• The ordered combination may be non-obvious even if each step is individually known

The Berkheimer Holding

• Berkheimer v. HP Inc. (Fed. Cir. 2018): whether additional claim elements are 'well-understood
• Routine
• And conventional' is a question of FACT — not law
• The Federal Circuit reversed the district court's eligibility ruling because there was a genuine dispute of material fact about whether the claimed elements were conventional

Impact on Prosecution

• Prior to Berkheimer, examiners routinely stated that computer implementation steps are conventional and therefore not 'significantly more'
• After Berkheimer, this must be supported by EVIDENCE (not just an examiner's conclusory statement)
• USPTO MEMORANDUM (April 19, 2018): the USPTO issued a memorandum clarifying that examiners must now provide evidentiary support for assertions that additional claim elements are well-understood
• Routine
• And conventional

Using Berkheimer in a Response

• If the examiner asserts that the additional elements (beyond the abstract idea) are merely conventional, challenge this assertion: ask the examiner to provide evidence (prior art; official notice) that the specific claimed combination is well-understood, routine, and conventional
• If the examiner cannot point to evidence, the § 101 rejection is improperly supported

Affirmative Use of Berkheimer

• Submit a § 1.132 declaration from an inventor or technical expert stating that the additional technical elements were NOT well-understood, routine, or conventional at the time the application was filed
• The declaration creates a factual dispute that must be resolved in the applicant's favor (or taken to PTAB)

Client Needs Patent Quickly

• Appeal takes 1-2 years at PTAB
• If the client needs the patent issued soon, amendment and allowance is faster

Berkheimer Factual Dispute

• If the issue is whether elements are conventional (a factual question), PTAB may not resolve it better than the examiner
• Consider a § 1.132 declaration to create the factual record

Appeal Procedure

• File Notice of Appeal ($860 small entity; $1,000 brief fee)
• Pre-appeal brief conference is available (2-page brief; 3-examiner panel; resolves ~40% of cases; worth trying before full appeal)
• File Appeal Brief (60 days from notice)
• PTAB issues a decision
• Federal Circuit appeal available

Pre-appeal Conference Strategy

• The pre-appeal brief conference is often underused for § 101 rejections
• A well-crafted 2-page brief arguing the examiner misapplied the 2019 Revised Guidance can often persuade a conference panel to allow examination to continue.