Alice v. CLC Bank was the most important decision last year in patentsphere. This presentation describes tips for patent prosecution of post-Alice.

1. Post-Alice Prosecution Guideline
Nelson Mullins
High Technology Team

2. Nelson Mullins Riley & Scarborough LLP
Alice Corp v. CLS Bank
 Invalidated Alice Corp's patent claims about the intermediated
settlement
 The SC holds that the claims of the patent:
 are drawn to the abstract idea of intermediated settlement;
 merely require generic computer implementation; and
 fail to transform the abstract idea into a patent eligible invention.
 After Alice decision
 USPTO established 2-part analysis for abstract idea
 Seeing more 101 rejections being tagged 'abstract idea'
 Lower courts applying Alice decision to invalidate claims

3. Nelson Mullins Riley & Scarborough LLP
2-Part Analysis for Abstract Idea
 First, perform the statutory category test
 If a claim is not directed to one of the four statutory categories
(i.e., process, machine, manufacture, or composition of matter),
reject the claim
 2-Part Analysis for Abstract Idea
 Determine whether the claim is directed to an abstract idea
 Examples: fundamental economic practices, certain methods of
organizing human activities, an idea itself, or mathematical formula
 If then, determine whether the claim amounts to significant more
than the abstract idea itself, for example:
 Improvements to another technology or technical fields;
 Improvements to the functioning of the computer itself; or
 Meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment7

4. Nelson Mullins Riley & Scarborough LLP
Tip #1: Alice-"abstract idea"
 The Alice Court did not provide a definition of "abstract idea"
 However, the Court appears to limit the "abstract idea" to be:
 A fundamental and long prevalent, and
 Well-known and widely used for long years.
 Such as, hedging or intermediated settlement
 Distinguish from Alice-"abstract idea"
 Argue that the subject matter of the invention is relatively new
and/or confined to a specific technological field
 Argue that the invention provides a practical use
 If the invention is not commerce or finance related, it may be
worthwhile to argue that the difference too

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Tip #2: More Steps than the Abstract Idea
 Draft claims to recite more than instructions to apply the
alleged abstract idea
 Include several detailed method steps which cannot be inferred
from the abstract idea
 Diamond v. Diehl
 Alice Court treats Diehl's claims amounting "significantly more"
 Diehl's claims recite an abstract idea in the form of formula, but
 include the additional steps of feeding temperature measurement to a
computer; and
 using the computer to apply the formula to calculate remaining cure
time

6. Nelson Mullins Riley & Scarborough LLP
Tip #3: Technical Elements and Solutions
 Draft claims to recite technical elements
 Specifically, recite technical solutions to a technical problem
 Include hardware elements
 Merely reciting a generic computer implementation does not pass
Alice-test
 In the specification,
 Discuss technical operations and technical improvements
 Discuss structural elements, specifically hardware

7. Nelson Mullins Riley & Scarborough LLP
Tip #4: Generic Computer Implementation
 The claims reciting methods in terms of a generic computer
implementation are not automatically patent-ineligible.
 Alice decision or 2-part analysis do not support this conclusion
 For a rejection under the ground that the claims recite a generic
computer implementation,
 Remind the Examiner on the 2-part analysis that the Examiner
has the burden to prove that the claims are drawn to an "abstract
idea."

8. Nelson Mullins Riley & Scarborough LLP
Tip #5: Support in the Specification
 Always include hardware
support in the specification
 To save unnecessary
argument that "the
hardware is implicitly or
inherently supported."

9. Nelson Mullins Riley & Scarborough LLP
Reference
 USPTO Memorandum: Preliminary Examination Instructions
in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et. al.
 Robert Plot kin, A Post-Alice Playbook: Practical Strategies for
Responding to Alice-Based Rejections

10. Nelson Mullins Riley & Scarborough LLP
Info
Lewis Lee
Patent Attorney @ Nelson Mullins
lewis.lee@nelsonmullins.com