Three Inspiring Office Action Responses From Technologies that Rarely See a 101 Rejection

In some technology classes, subject matter eligibility rejections are par for the course, but in others, they can come as more of a surprise. Take, for example, the field of printing/measuring and testing. Whereas attorneys drafting applications in fields such as these may expect to spend the majority of their prosecution time fine-tuning technology-specific claims around prior art rejections, the continued prevalence of Alice and the increasing use of computer-implemented components across mechanical fields means that the ability to craft a convincing argument on subject matter eligibility can be critical here as well. We took a look at three examples of winning responses from Art Unit 2862 to find out how their arguments were able to stand up to the test.

Additional Steps and Elements: Prong Two  of the Alice Test

As is well known, Alice, the Supreme Court set forth a two-pronged test for patent-eligibility. First, a determination is made as to whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (collectively, called the “judicial exceptions”). If the answer is yes, then the second step is to further determine whether any element or combination of elements, in the claim is sufficient to ensure that the claim amounts to something significantly more than a judicial exception. 

Whereas the Alice test would seem to present an either/or situation, it is nearly always to the prosecutor’s benefit to cover all bases by presenting arguments on both prongs and leave it to the examiner to determine which they find convincing.

An example of arguments directed to the Alice test in the printing/measuring and the testing domain is in an Office Action response dated October 28, 2019, from application 15/448,587 for an “Apparatus and Method of Processing Multi-Component Induction Data.” 

First, the applicant argued that claim 1 was not an abstract idea. Specifically, it was argued that the claim recited, “acquiring signals based on the multicomponent tool having a plurality of receiver arrays,” which is not abstract. Furthermore, claim 1 was not directed to a mathematical concept and did not recite any mathematical relationships, formulas, or calculations. Therefore, the applicant argued, the contention that claim 1 was directed to an abstract idea of mathematical concepts was an overgeneralization and ignored the clear claim language and presence of non-abstract ideas. 

Second, the applicant argued that even if claim 1 had failed under step one of Alice, the claim would meet step two. In the applicant’s case, the recited exception was integrated into a practical application of the exception. The claim recited the additional element of generating data with “improved resolution at multiple depths of investigation compared to the acquired signals” and practically applied the alleged abstract idea to improving the acquired signal of the multi-component induction logging tool. Accordingly, the applicant argued, the claimed combination was an inventive concept for generating improved data with an improved resolution at multiple depths of investigation compared to the acquired signals, and therefore claim 1 recited significantly more than the alleged abstract idea.

The Examiner’s response to these arguments focused on those relating to the second step of Alice. In an office action dated December 4, 2019, the Examiner withdrew the Alice rejection, stating:

The additional element of a receiver triad, the additional step of “correlates the electromagnetic properties of the downhole formation”, and the additional step of “the data has an improved resolution at multiple depths of investigation compared to the acquired signals” integrates the abstract idea into a practical application that reflects an improvement to another technology or technical field. Therefore, the claim is eligible at Prong Two of the revised step 2A (see 2019 Revised Patent Subject Matter Eligibility Guidance – Revised Step 2A). The rejection of 29 July 2019 has been withdrawn.

A notice of allowance was sent on March 6, 2020, and the resulting patent issued as U.S. Patent No. 10,670,767 on June 2, 2020.

Software-Related Claims are not Automatically Judicial Exceptions Under Enfish 

Before Enfish, courts had generally found that software-related inventions, requiring the computer, represented abstract ideas. Because of this, when the Alice test was applied to any software-related claims, the analysis generally assumed that step one was met and moved on to step two. However, in Enfish, the court found that the software claims at issue were not directed to an abstract idea.  Accordingly, the patent-eligibility analysis did not need to proceed beyond step one. 

A case involving a printing/measuring and testing invention in which Enfish was successfully argued against an Alice rejection is in an office action response dated June 3, 2019, from application 15/649,571 for a “Methods for Improved Heading Estimation.” 

The applicant quoted Enfish to assert that step one of Alice asks whether the focus of the claims is on the specific asserted improvement in computer capabilities or is an abstract idea invoking computers merely as tools:

“[T]he first step in the Alice inquiry … asks whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). 

Applicant went on to argue that in their case, the claims could not be simplified into mere mental steps. The claims provided a practical application for determining a global rotation estimate, applying spatial magnetic filtering, and generating accurate path data based on magnetic and gyro sensor data collected at a computing device. When considered as a whole, the applicant argued that the claims recited significantly more than mental processes or instructions performed on generic computer components that are well-understood, routine, and conventional. 

In a notice of allowance dated June 12, 2019, the Examiner explained how applicant had overcome the Alice rejection:

Claims 15-30 are allowable over the rejection under 35 U.S.C. 101 because the claim does not recite any [sic] the judicial exceptions enumerated in the 2019 PEG. For instance, the claim does not recite any mathematical relationships, formulas, or calculations. Further, the claim does not recite a mental process because the steps are not practically performed in the human mind. Finally, the claim does not recite any method of organizing human activity such as fundamental economic concepts or managing interactions between people. Thus, the claim is eligible because it does not recite a judicial exception.

The resulting patent was issued as U.S. Patent No. 10,393,543 on August 27, 2019.

No Monopolization of an Abstract Idea

An example focusing on step two of Alice did not emphasize whether the claims included a judicial exception but instead focused on whether the claims attempted to monopolize the judicial exception for all uses. 

In application 15/438,259 for “Expected Sensor Measurement Receipt Interval Estimation,” the applicant presented arguments in response to an Alice rejection in an office action response dated March 23, 2020. The applicant contended that, when making the determination of whether a claim is directed to an abstract idea, the examiners should keep in mind that some inventions pertaining to improvements in other technologies are not abstract when appropriately claimed. The applicant argued that the claims at issue provided a particular improvement to the technology of sensor systems by automatically performing the remedial action of restarting or rebooting the system. 

In a notice of allowance dated July 10, 2020, the examiner referenced the fact that the claims were not monopolizing an abstract idea as dispositive:

However, when considering the claims as a whole, the examiner determined that there was enough in the additional elements to be indicative of integration into a practical application. Here the claim is not monopolizing the abstract math for all purposes, just those relating to rebooting/restarting the sensor system. And the sensor system can still be rebooted/restarted even if another mathematical technique is used. Therefore, the claims are not directed to a judicial exception. They qualify as eligible subject matter under 35 U.S.C. 101.

Although the case was allowed, it was abandoned before issuing as a patent for failure to pay the issue fee.

Conclusion

In technology areas where such rejections are rare, patent practitioners are less likely to be experienced with crafting responses to Alice, making the task more daunting. Nonetheless, as the cases above demonstrate, it is indeed possible to overcome an Alice rejection in technology domains where Alice is rarely encountered. You just need to know-how.

The cases for this article were found using Arguminer – patent prosecution software from IP Toolworks. The Arguminer software automatically sifts through millions of responses, finding examples that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users.

We shared a similar post with proven arguments for the ‘Gaming’ domain. How about sharing that with your colleague who deals with patent prosecution in gaming?

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you find proven arguments to use in your next Office Action. Arguminer not only helps you level up your prosecution practice but can assist in training new attorneys working with you.

5 Anti-Alice Arguments from Responses that Worked

5 Anti-Alice Arguments from Responses that Worked

Since the patent office first started applying it in late 2014, the case of Alice v. CLS Bank has been a persistent thorn in the side of patent attorneys, particularly those prosecuting applications in the technology center which deals with business method inventions.1 This has inspired articles addressing anti-Alice arguments, including those that have succeeded in courts and at the PTAB.2

However, as the overwhelming majority of patent applications will neither be litigated nor appealed to the PTAB, it seems that there would be independent value in looking at arguments that have overcome Alice rejections during the one process that all patent application have to go through – i.e., examination. I used IP Toolworks’ Arguminer software to look for office action responses which were followed by withdrawal of responses would be beyond the scope here, I have identified five arguments from them that I feel are particularly worth relaying.

These success cases utilize creative and unexpected strategies, drawing upon “ancient knowledge,” latest cases and unexpected leveraging of the Administrative Procedure Act.

#5 Pre-Alice Training Materials Presented by the Patent Office in 2012 Can Still be Applied to Show Eligibility Post-Alice in 2016 (as seen in prosecution of 14/452,375)

While the patent office has issued numerous memoranda, updates, and similar documents regarding the application of Alice v. CLS,3 the February 17, 2016 response to the rejection of Warehouse Management System application 14/452,375 (the “‘375 Application”) demonstrates that there can be value in applying ancient (i.e., pre Alice) knowledge rather than simply trying to fit the patent office’s latest guidance to the facts of your case. In that case, the claims were initially rejected as directed to an abstract idea, based largely on the post-Alice case of Planet Bingo, LLC v. VKGS LLC.4 However, rather than relying on the patent office’s training material which specifically addressed either Planet Bingo or other post-Alice cases,5 the applicant’s response reached back to the patent office’s August 2012 subject matter eligibility update, explaining that that document was important because:

While the discussion of what amounts to significantly more than a patent-ineligible concept in the document relates to determining whether a claim amounts to significantly more than a law of nature or natural principle, the analysis is reasonably applied to abstract ideas as well since the factors for considering whether an idea is “significantly more” are not tied specifically to laws of nature.6

The applicant then explained how applying the factors laid out in the August 2012 guidance showed that the claims in question were patent eligible, and in the next office action the examiner withdrew the subject matter eligibility rejections of all but one of the pending claims.7 When responding to that last rejection, the applicant shifted from relying on the pre-Alice guidance to a detailed application of Enfish, Bascom and other post-Alice cases.8 However, that shouldn’t undermine the lesson that pre-Alice materials can still be useful, especially since, as shown in the next example …  

  #4 Diamond v. Diehr and other pre-Alice Supreme Court Opinions are Still Good Law and can Establish Eligibility (as seen in 14/137,530)  

When it was originally filed in December of 2013, application 14/137,530 for Semiconductor Manufacturing using Design Verification with Markers (the “‘530 Application”) included 20 claims, all of which were rejected in early 2015 based on Alice.9 At that time, while the patent office had issued relatively less material than by the time of the response discussed above for the ‘375 Application, it had still provided interim eligibility guidance for applying Alice v. CLS,10 as well as examples of the application of that case in the context of the abstract idea exception.11 However, rather than arguing in favor of patentability based on those documents, the applicant reached all the way back to the 1981 decision of Diamond v. Diehr, explaining that, under that case, the method defined by the first independent claim was patent eligible because

[the claimed method] provides that the circuit design that is cleared of design rule violations by the EDA computer system is used in manufacturing a system. Thus, there is more than mere abstract manipulation of numbers by a computer. Instead, the design is used to manufacture a physical device that is free from design rule defects. Such an interaction between a program and a controlled physical process has been ruled to be allowable over a 35 U.S.C. § 101 rejection.12

While, some lingering 103 issues have (as of writing) prevented the ‘530 Application from being allowed, the next action did withdraw the 101 rejections, further illustrating that sometimes the best way to respond to new rejections may be with old cases. Of course, that doesn’t mean that there’s nothing to be gained from being aware of, and applying, new cases. Indeed, the next example makes clear that arguments based on post-Alice cases can also be successful since …  

#3 Bascom v. AT&T Mobility Can Establish Eligibility even if a Claim is Directed to an Abstract Idea (as seen in 13/757,470)  

When the claims to a method and system for obtaining location information from a wireless network in application 13/757,740 (the “‘740 Application”) were rejected for being directed to a judicial exception without significantly more, the applicant didn’t turn to pre Alice guidelines or cases. Instead, in a response filed on November 9, 2016, the applicant focused on much more recent material, including the case of Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,13 which had been decided only that summer. In particular, the applicant relied on Bascom for the proposition that claim which recite a “specific, discrete implementation of” a purportedly abstract idea were not ineligible under section 101, and then identified specific steps recited in the claim as “transform[ing] the purported abstract idea of mobility management into a particular practical application of that purported abstract idea.”14

The next office action showed that this focus on more recent material was effective, stating that “With regards to Applicant argument, for rejection under 35 USC 101, the argument is persuasive and therefore, the rejection is withdrawn.”15

Unfortunately for the applicant, like the ‘530 Application, the ‘740 Application has not (as of writing) been allowed due to some lingering 103 issues, though that should in no way detract from the efficacy of the November 9, 2016 response’s subject matter eligibility arguments, especially since using those arguments allowed the applicant to overcome the subject matter eligibility rejections without any claim amendments. Of course, approaches that differ from those described above in more than just the recency of their supporting citations are also possible. For example, rather than just explaining why a response is substantively wrong…  

#2 You Can use the PTAB Decision ofEx Parte Poisson to Argue that there is no Prima Facie case ofIneligibility (as seen in 13/886,540)  

The Federal Circuit has been generally skeptical of the patent eligibility of systems which apply rules for various purposes.16 Thus, it isn’t a surprise that the claims of application 13/886,540 for Rule-Based Archival Maintenance (the “‘540 Application”) were rejected based on Alice for being directed to an abstract idea without significantly more.17 In responding to these rejections, the applicant began by explaining what was necessary to establish a prima facie case of ineligibility based on the MPEP and the patent office’s subject matter eligibility guidance.18 Then, it analogized the pending rejections to those addressed by the PTAB in Ex Parte Poisson to explain why the requirements for a prima facie case had not been met:

Instead of addressing the specific recitations of the claims, the Office oversimplifies the claimed invention by asserting that the claims are directed to the abstract idea of a series of steps to manage information. In this regard, Applicant draws attention to a recent PTAB decision, in Ex parte Poisson, where the PTAB overturned a finding by the Office that the claims were directed to an abstract idea. Ex part Poisson, No. 2012-011084, (P.T.A.B. Feb. 27, 2015). The Board noted that the Office failed to perform a proper claim construction of the claims and consider the claims as a whole. Id. at 4-5.

This failure, the Board determined, caused the Office to misinterpret the claims and oversimplify the claims in making its determination that the claims were directed to an abstract idea. Id. at 4-5.19 In the next office action, the 101 rejections were withdrawn,20 though some 103 and 112 issues remained which prevented the case from being allowed until December of last year. Of course, you don’t just have to rely on patent-specific jurisprudence when responding to Alice rejections.   

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#1 You can use the Administrative Procedure Act to Combine Subject Matter Eligibility and Art-Based Arguments (as seen in 13/229,755)  

On March 28, 2016, the claims of application 13/229,755 for systems and methods for discovery of related interactable items in a mobile store environment (the “‘755 Application”) were rejected under 35 U.S.C. §§ 101 and 102. 21 While, technically, eligibility under section 101 and patentability under section 102 are separate questions, the applicant on the ‘755 Application leveraged 102 arguments to respond to the 101 rejections with the following application of the administrative procedure act:

whether or not specific claim features are “well-understood, routine and conventional,” and thus amount to significantly more than the judicial exception itself, is a factual analysis that must be based on evidence. The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA), 5 U.S.C. 500 et seq.

as discussed below, Drucker [the reference cited in the rejections under 35 U.S.C. § 102] does not disclose or suggest at least the feature of “wherein the new graphical presentation data includes a visible link between the seed interactable item and the selection indicating that a user navigated from the seed interactable item to the selection,” as recited in exemplary independent claim 1. Because Drucker does not disclose or suggest at least this feature of independent claim 1, this feature is not “well-understood, routine and conventional,” and as such, independent claim 1, and similarly independent claims 10-13, 22, and 28-31, clearly recites “significantly more” than the alleged abstract ideas.22

In the following office action, all rejections under 35 U.S.C. § 101 were withdrawn though, ironically, the rejections under section 102 were maintained23 and have since been appealed to the PTAB.24As the above responses demonstrate, applicants have successfully overcome subject matter eligibility rejections without having to resort to the PTAB or the courts using a wide variety of arguments. While, ultimately, there’s no guarantee that any particular argument will work to overcome a rejection in any particular case, considering past arguments, including those described in this paper, can at least provide inspiration and possible tactics for attorneys who are seeking to establish the subject matter eligibility of their own clients’ inventions.    

References

 1In particular, the patent office’s open data portal indicates that the allowance rate for class 705 – Financial, Business Practice, Management, or Cost/Price Determination (Data Processing) – dropped from 31.2% pre-Alice, to 23.5% in 2014, to 9.4% in 2015, to 4.7% in 2016. See United States Patent and Trademark Office, Allowance Rate by USPC Class, Open Data Portal (beta) at https://developer.uspto.gov/visualization/allowance-rate-uspc-class (visited 5/7/2017). 

2 Daniel A. Parrish and Amir N. Penn, 5 Ways To Overcome An Examiner’s Post-Alice 101 Rejection, LAW360, available at www.law360.com/articles/801995/5-ways-to-overcome-an-examiner-s-post-alice-101-rejection (visited 5/7/2017) (addressing PTAB decisions as a source of authority for responding to Alice in light of the dearth of guidance from the Federal Circuit); 7 Post-Alice Patent Cases That Survived 101 Rejections – Clearing Some Cloud of Doubts on Software Patent Eligibility, GREYB SERVICES, available at https://www.greyb.com/post-alice-patentcases-surviving-101-rejection (visited 5/7/2017) (reviewing seven court decisions in which patents survived Alice based section 101 challenges). 

3 See United States Patent and Trademark Office, Subject Matter Eligibility, available at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility (visited 5/7/2017). 

4 Office Action of December 4, 2015 at 2-4, ‘375 Application. 

5 E.g., 2014 Interim Guidance on Patent Subject Matter Eligibility, which specifically addressed Planet Bingo in its section on Abstract Idea Decisions from the Federal Circuit since Alice Corp. 

6 Amendment and Remarks of February 17, 2016 at 8, ‘375 Application. 

7 Office Action of June 6, 2016, ‘375 Application. 

8 Amendment and Remarks of September 6, 2016 at 7-11, ‘375 Application. 

9 Office Action of February 23, 2015, ‘530 Application. 

10 United States Patent and Trademark Office, 2014 Interim Guidance on Patent Subject Matter Eligibility, available at https://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf (visited 5/7/2016). 

11United States Patent and Trademark Office, Examples: Abstract Ideas, available at https://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf (visited 5/7/2016). 

12 Amendment and Remarks of May 26, 2015 at 5, ‘530 Application. 

13 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). 

14Amendment and Remarks of November 9, 2016, at 14, ‘740 Application. 

15Office Action of December 27, 2016 at 13, ‘740 Application. 

16See SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014) (“Whatever the boundaries of the ‘abstract ideas’ category, the claim at issue involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.”). 

17Office Action of March 10, 2016 at 3-4, ‘540 Application. 

18Amendment and Remarks of May 20, 2016 at 10, ‘540 Application. 

19Amendment and Remarks of May 20, 2016 at 11-12, ‘540 Application. 

20Office Action of September 9, 2016, ‘540 Application. 

21Office Action of March 28, 2016, ‘755 Application. 

22Amendment and Remarks of June 27, 2016 at 22, ‘755 Application. 

23Office Action of September 14, 2016 at 5, ‘755 Application (“Rejection of claims under 35 USC 101 is withdrawn. Rejection of claims under 35 USC 112 and 35 USC 102 are maintained.”). 

24Appeal Brief of January 13, 2017 at 11, ‘755 Application: Claims 1-35 are rejected under 35 U.S.C. § 102(b) for allegedly being anticipated by U.S. Publication No. 2007/0033220 (“Drucker”). The Appellant respectfully traverses this ground of rejection.

Office Action Responses | Beat the House on Alice in Gaming

Office Action Responses Where Gaming Inventions Beat the House on Alice

Is there an easy way to find proven office action responses?……. Read on to find out!

While the USPTO has reported that the number of, and variability in, rejections based on Alice v. CLS Bank have decreased following 2019’s eligibility guidance, Alice rejections continue to be among the most challenging to overcome and disproportionately affect certain technologies and categories of filers1. One area of technology which continues to be substantially impacted by Alice rejections is gaming, with some rejections appearing to be based on a categorical rule that any gaming claims are per-se directed to an abstract idea2.  However, while dealing with Alice rejections may seem like a roll of the dice, it isn’t necessarily a rigged game, and having a system can help even the odds.  To that end, patent agents and attorneys working on gaming technologies may want to keep these proven strategies up their sleeves to help strengthen their hands when representing their clients.

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3. Turning Lemons Into Lemonade with In re Guldenaar

On its face, In re Guldenaar3 is not a great case for gaming inventions.  Essentially, Guldenaar appealed a rejection in which the examiner argued that the invention was directed to “rules for playing a game” which  fell within the realm of “methods of organizing human activities.” The Federal Circuit sided with the examiner, referring back to its prior decision in In re Smith4 as establishing that rules for playing a game is an abstract idea, and finding that the claims did not include an inventive concept that could transform them into a patent eligible application. Guldenaar also featured a concurrence by Judge Mayer, in which he took the position that “[w]hile games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge.  They should therefore be deemed categorically ineligible for patent.”5

Despite its apparent negativity toward gaming patents, going below the surface allows Guldenaar to be applied in support of eligibility of gaming inventions.  This was illustrated in an office action response from application 15/785,865 for an “Electronic Gaming Machine and Method.”  In July of 2018, that application had been rejected based on the argument that “managing a game of chance on a plurality of reels” was an abstract idea based on In re Smith6.  However, despite the fact that Guldenaar (like the office action) had relied on Smith, the applicant was able to turn that case in its favor, arguing that:

As to the subject matter recited in claim 1 then, it first should be noted that the Federal Circuit has issued no blanket prohibition against the patent eligibility of gaming machines.  In fact in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), the Federal Circuit specifically stated that their decision was “not to say that all inventions in the gaming arts would be foreclosed from patent protection under §101.” Id. at 819 (emphasis added).  This was confirmed recently in In re Marco Guldenaar Holding, B.V., 2018 US App. LEXIS 36645, *9 (Fed. Cir. 2018). For example, the Federal Circuit suggested in In re Smith, “claims directed to conducting a game using a new or original deck of cards” potentially could survive a challenge under §101 (a point which the Office admitted during oral argument).7

This was then followed by a notice of allowance, with the result that the Electronic Gaming Machine and Method is now U.S. patent 10,366,569.

2. Threading the Needle with 2019 Guidance’s Abstract Idea Categories

In re Smith isn’t the only obstacle that prosecutors working on gaming patent applications may face.  For example, the office action dated 12/14/2018 on application 15/861,431 (Apparatus and Methods for Multimedia Games), acknowledged that the subject invention was not a “fundamental economic practice” under Smith8, yet still rejected it under § 101 based on the conclusion that it was within the category of “certain methods of organizing human activity.”9

However, despite not being able to rely on Guldenaar to reinterpret Smith as described in the preceding section, the applicant was still able to prevail by pointing out that the 2019 guidance defined “certain methods of organizing human activity” in terms of specific subcategories, and none of those subcategories was relevant in that case: Applicant respectfully notes the allegation in the Office Action that the claims “involve arranging portions of multimedia content for presentation to a user to create a multimedia game.”  Even if this allegation were taken to be accurate (which applicant does not concede), applicant respectfully submits that “arranging portions of multimedia content” is not a “human activity” as that term is defined in the 2019 Guidance.  Rather, the 2019 Guidance defines this category in terms of “fundamental economic principles or practices,” “commercial or legal interactions,” or “managing personal behavior or relationships or interactions between people.”  See 2019 Guidance at 52.  Applicant therefore respectfully submits that, under the 2019 Guidance, the pending claims do not recite any of the enumerated “certain methods of organizing human activity.”

Accordingly, because the pending claims do not recite any concept that falls within the enumerated subject matter groupings in the 2019 Guidance, the claims pass Prong One of Step 2A of the revised subject matter eligibility test and are thus patent-eligible.  Applicant therefore respectfully requests withdrawal of the rejections and allowance of the claims.10

Similar category arguments can also be made in office action response to Smith-based rejections.  For example, in office action response to a rejection which stated that all wagering games were similar to In re Smith11, the attorney prosecuting application 15/626,422 (method of gaming, a gaming system and a game controller) argued that:

Claim 43 is directed to displaying a plurality of cloned symbol display potions adjacent to the selected at least one reel at a display device of a gaming machine, the plurality of cloned symbol display positions displaying the plurality of symbols selected for display in the initial outcome for the selected at least one reel, and determining an outcome, based at least in part on, the plurality of symbols in the initial outcome and the plurality of symbols displayed at the cloned symbol positions.  Thus, the limitations of Applicant’s independent claim 43 are unrelated to mathematical concepts, mental processes, and certain methods of organizing human activity.  Moreover, even if an enumerated judicial exception were present (which it is not), the limitations of independent claim 43 convey specific graphical information in a specific way at a display device of a gaming machine.  Thus, the recited display control is a practical application in gaming technology.

Accordingly, Applicant respectfully submits that claim 43 of the present application is directed to statutory subject matter under 35 U.S.C. § 101, and the section 101 rejection is appropriately withdrawn based on the appropriate legal standards, including 2019 PEG.12

Both OA responses were followed by new actions which withdrew the 101 rejections, with the action on 15/861,431 specifically stating that “[t]he examiner is persuaded that the current claims are not directed to an abstract idea in light of the 2019 Revised Patent Subject Matter Eligibility Guidance.”13

1. Bringing it Down to Earth with Concrete Limitations and Physical Applications

A third approach to showing that a gaming abstract is to emphasize its concreteness in implementation and physicality of its application.  An example of this can be found in the prosecution of application 15/495,973 for Electronic Fund Transfer for Mobile Gaming.  In January of 2019, that application was rejected under § 101 as being directed to a fundamental economic practice and the sort of organizing of human activities that were identified as ineligible in previous cases.14 In office action response to this rejection, the applicant emphasized both the components recited in the claim and the real world impact of its application:

Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as allegedly being directed to abstract ideas.  Applicants respectfully disagree.  To advance prosecution, claim 1 has been amended to include eligible subject matter such as a location tracker.

The location server and/or tracker, when considered in combination with the vessel and mobile gaming device provide for meaningful limits.  The claims are not simply “a method of exchanging and resolving financial obligations between a player and an operator of the gaming machine” as alleged in the Office Action.  The location server and/or tracker acts in concert with the recited features of the vessel and mobile gaming devices to enable the mobile gaming devices to permit a game of chance to be played on the mobile gaming devices.

Moreover, the enablement of a fund transfer to be approved for a particular requesting mobile device and the enablement of a game to be played by a user or player based upon the determining of a physical location of a game device upon a vessel and the physical determination of a location of a vessel being determined require activity outside of a person’s mind.  Furthermore the determination of an actual physical location of a mobile game device upon a vessel in addition to the determination of an actual physical location of the vessel is not an abstract concept. (See, CG Technology Development, LLC et al., vs. Bwin Party (USA),

Inc., et al. (2:16-cv-0087-RCJ-VCF)).  These features are not long-prevalent and fundamental practices in current business practices, in comparison to the abstract ideas of risk-hedging and intermediated settlement relied upon by the Alice court, which have been in widespread use for many centuries throughout the world.15

This office action response was followed by an office action in which all § 101 rejections had been withdrawn16, and 15/495,973 subsequently issued as patent 10,586,425 on March 10, 2020.

Conclusion

The above office action responses, and countless others that have worked to overcome § 101 rejections on gaming patent applications, provide both examples and building blocks which can be used to make the right calls in what may look like a longshot situation.   However, while the file wrappers which include those office action responses may theoretically be publicly available, the patent office hasn’t laid its cards on the table – neither PAIR nor the newly released patent center (in beta as of the time of writing) provide functionality that could allow a practitioner to find responses that may be relevant in any particular situation.  

So how can the value inherent in past office action responses be unlocked?  One way would be for a practitioner to look at patents for inventions like the one he or she is working on, look at their file wrappers in PAIR or patent center, and hope to get lucky with something that can be applied to his or her case.  However, we would propose a better way.  The cases for this article were all found using the Arguminer patent prosecution software from IP Toolworks.  The Arguminer software automatically sifts through millions of documents, finding office action responses, appeal briefs and other documents that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users. 

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you discover game changing strategies to use in your next Office Action.

References

1Andrew A. Toole & Nicholas A. Pairolero, Adjusting to Alice: USPTO patent examination outcomes after Alice Corp. v. C LS Bank International, U.S.P.T.O., Office of the Chief Economist, IP DATA HIGHLIGHTS  3, (Apr., 2020). Available at https://www.uspto.gov/sites/default/files/documents/OCE-DH_AdjustingtoAlice.pdf.Mark A. Leml & Samantha Zyontz, Does Alice Target Patent Trolls? (Mar., 2020). Available at SSRN: https://ssrn.com/abstract=3561252 or http://dx.doi.org/10.2139/ssrn.3561252.

 2E.g., Office Action of July 17, 2019 on application 15/626,422 at 10:

The examiner finds that wagering games are all rather similar: accepting a wager, playing the game according to the rules comprising generating random outcomes according to the rules, determining winning outcomes, determining how much is to be paid for a winning outcome, and paying out the winnings.  This breakdown of wagering claim language is similar to that in precedential case in re Smith (in re Smith (Fed. Cir. 2016), appeal 2015-1664, U.S. patent application 12/912,410) [in which a subject matter eligibility rejection was appealed and affirmed by the PTAB and the Federal Circuit]. 

 3In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).

 4815 F.3d 816 (Fed. Cir. 2016).

5In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (Mayer, J. Concurring).

 6Office Action of July 10, 2018 on application 15/785,865 at 5.

 7Response to office action of July 10, 2018 on application 15/785,865 at 5 (underlining, italics and bold formatting from response).

8Office Action of December 14, 2018 on application 15/861,431 at 10:

The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well-known.”  See, e.g., In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a “fundamental economic practice”).

The present claims do not fall within the category of “fundamental economic practices”.

9Id. at 11:

The present claims involve arranging portions of multimedia content for presentation to a user to create a multimedia game.  This makes the present claims very similar to the claims recited in DietGoal, Ameranth, and Electric Power Group.

The present claims are therefore directed to the certain methods of organizing human activity.

 10Response to Office Action of December 14, 2018 on application 15/861,431 at 17.

 11Office Action of July 17, 2019 on application 15/626,422 at 10.

 12Response to Office Action of July 17, 2019 on application 15/626,422 at 13-14.

 13Office Action of August 28, 2019 on application 15/861,431 at 4.

 14Office Action of January 11, 2019 on application 15/495,973 at 3-4.

 15Response to Office Action of January 11, 2019 on application 15/495,973 at 4-5.

 16Office Action of August 8, 2019 on application 15/495,973