• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Protect Inventions / Strategy to overcome patentable subject matter rejection

Strategy to overcome patentable subject matter rejection

February 19, 2017 by James Yang

A brief history of patentable subject matter rejections

Ever since Alice/Mayo, a number of decisions have been rendered regarding patentable subject matter or 35 USC 101.  In other words, whether a claim in a patent or patent application is eligible for patent protection under Section 101.  Each new case adds to the body of patentable subject matter case law to help the patenting community adjust its practice in preparing a patent application and litigating patent cases.  With each decision comes an opportunity to learn how patent counsel might overcome a rejection related to patentable subject matter.  The following explanation about Apple et al. v. Ameranth (Fed. Circ. 2016) provides a reasoned analysis as to how patent counsel might mitigate a finding that the alleged invention is merely an insignificant post solution activity.

Background of Dispute between Apple and Ameranth

Ameranth sued or threatened to sue Apple, Domino’s Pizza, Fandango, and Open Table for patent infringement of three patents (USPNs 6,384,850; 6,871,325; 6,982,733). In response, the defendants joined together to attack the validity of the Ameranth patents through a post-grant proceeding at the USPTO known as a Covered Business Method (CBM) review. A CBM review allows a 3rd party to attack the validity of the patent.  The primary attack to invalidate Ameranth’s patents was that the patent claims were directed to ineligible patentable subject matter under Section 101 of the Patent Act and the USPTO agreed, ruling the claims unpatentable, after which Ameranth appealed.

Court’s analysis of patentable subject matter rejections

The basic reasoning that the appellate court applied in order to invalidate the patents was that the inventive concepts being claimed or alleged to be patentable subject matter were insignificant post-solution activities of a commonly used business practice – taking orders for food items over the phone and computer. As explained further below, it may make a difference as to whether a patent owner when faced with the same invalidity attack advocates for a broader or narrower description of the invention in the first step of the two-step Alice/Mayo analysis used to analyze when an invention is patentable subject matter.

Two-step Alice/Mayo analysis

In determining whether the claimed invention was patentable subject matter, the court analyzed the claimed invention based on the two-step Alice/Mayo analysis as stated below:

To determine whether a claim is eligible under § 101, we must “first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If they are, we then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim into a patent-eligible application.’ Id. (quoting Mayo Collaborative Servs. v. Prometheus labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)).

First step of Alice/Mayo Analysis

The first step is used to determine whether the patent claims are directed to an abstract idea. Here, the court found that the claimed invention was directed to an abstract idea of “generating a second menu from a first menu and sending the second menu to another location” such as the user’s cell phone or tablet, or the computer

The court’s characterization of the claimed invention is more understandable when understood in the context of the patent specification which explained that ordering prepared foods was historically done verbally and the order written down on a piece of paper. The patent owner explained that there was no simple technique for creating restaurant menus on a computer was the reason that the widespread use of computer technology to take food orders at a restaurant was not utilized. The patented invention allowed the user to enter a menu (i.e., the first menu) on the desktop computer at the food provider (e.g., pizza parlor) and then transfer the menu to the tablet computer which would be the second menu. This simplified the process of creating restaurant menus on a tablet computer.

Take note that the description of the invention in the patent was narrowly drawn to the method by which the menu was created and transferred to the tablet computer.  The description of invention could have been more broadly described as a method of taking an order on the tablet computer or even more generically described as a method and system of ordering food at a restaurant.  This will be important as discussed below in determining whether the invention is patentable subject matter.

Second step of Alice/Mayo Analysis

For the second step, Amaranth provided a number of features of the system which it believed constituted an inventive concept so that the claimed invention was eligible for patent protection under § 101. However, for each feature asserted by Amaranth (the patent owner), the court found that those features were insignificant post-solution activity which did not transform the abstract idea into patent-eligible subject matter.

For example, in one of the claims, the modified second menu could be linked to a specific customer at a specific table. Amaranth argued that this was unconventional and unique at the time of filing (The application was filed in 1999) because the very capability of linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handheld devices. Nevertheless, the court found that this feature was directed to an insignificant post-solution activity. In other words, this feature was not related to the activity of creating a menu from a desktop computer to a tablet computer identified in step one but was instead related to an activity that occurred after that menu creation process.  Thus, the claims were directed to an abstract idea, not patentable subject matter, and thus unpatentable.

A possible strategy for patentable subject matter rejections

Based on this decision, there may be a case for trying to achieve a broader definition of the invention in the first step of the two-step Alice/Mayo analysis so that the alleged solution activity would be considered as being part of the invention and not a post-solution activity.

Because the claimed invention was defined as directed to a method of generating a menu on a desktop so that it could be transferred to a tablet computer, I would tend to agree with the court that this would be post solution activity. However, if the claimed invention was defined as directed to a method and use of implementing the tablet computer and taking orders for prepared foods, then the linking orders feature, in my opinion, may be better characterized as being a part of the invention and not a post solution activity.

For these reasons, there may be a basis for arguing for a broader definition of the invention in the first step of the two-step Alice/Mayo analysis. In doing so, one would expect the claimed invention to be found as being directed to an abstract idea under step one.  However, the goal would be to eliminate the argument that the features or steps asserted as the inventive concept in step two of the Alice/Mayo analysis would be considered as insignificant post solution activity.

I invite you to contact me with your patent questions at (949)433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Related Articles for Protecting Inventions

  • Four types of intellectual property you can use to protect your idea and how to use them
  • 8 tips to successfully protect your idea
  • Reasons to only market your invention after securing patent pendency
  • Patent protection benefits and why every inventor should consider getting one
  • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Patent attorney and getting them to sign a confidentiality agreement
  • Can a confidentiality agreement protect me like a patent application?
  • Dangers of 1 yr grace period under first-inventor-to-file system
  • Beware of marketing an invention before filing a patent application
  • Risks and benefits of securing software patent protection
  • Strategy to overcome patentable subject matter rejection
  • Best uses for design patents
  • Overview of Patents and Intellectual Property
  • Pros and cons of filing a continuation-in-part application
  • Benefits of Patent Protection
  • Continuation, divisional and continuation-in-part applications
  • Importance of Documenting the Invention
  • Abstract ideas require something more for patent protection
  • Abstract idea hard to define for patent eligibility purposes
  • USPTO Report On patent-eligible subject matter
  • Broad patents spread a wide net but more likely to be invalid
  • Misconceptions of provisional patent application


  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney