Alice, The most common phrase these days?
“Alice”, we all have been hearing this phrase since long now and are continuously making efforts to have the invention look real or hardware-based. Examiners are rejecting applications that seem software or business methods without looking in detail but at the same time Examiners are giving hint how to amend claims to have substantial subject matter in the claims. Based on the given hints, Attorneys have started drafting claims to proactively overcome Alice related concerns at the time of prosecution.
The first question that comes to mind is what makes the claims abstract? Any claims or portions of claims that focus on simple or mere steps such as “receiving…”, “sending”, “transmitting…”, “classifying…”, “processing…”, “calculating…” etc. make them abstract. In other words, no tangible output associated with the claims make the subject matter abstract.
Several approaches are followed to tackle Alice while drafting claims. For example, drafters add phrases such as “processor”, “a server”, “a specific processor” or “a computer” or other hardware elements. The addition of these phrases may work with some Examining group but not with all. Few exemplary patent publications are: US20160071085 A1, US20150348023 A1, US20150248672 A1, US20160092967 A1, US20150213137 A1. So now the question is adding these elements/components is sufficient to overcome Alice?. The answer is NO; we need to think over and above these. The whole idea is to draft claims such that they look real or they don’t merely talk about processing, analyzing, calculating or storing.
Based on my experience with various drafting attorneys and learning tips on how to possibly overcome Alice rejection for any non-hardware based inventions. Few tips include simply adding limitations as applicable: “graphical user interface”, “interface”, “display”, “physical activities”, “real-time” or any tangible output generated by a system. The whole idea is to set up a physical context of the invention beyond just “doing mathematics.” We can add limitations that focus on performing steps in the real world. For example, sensing real-time inputs such as heartbeat, deploying vehicles or similar limitations depending on the nature of the invention. Other than this, we can showcase that invention is implemented on specific devices such as a printer, a multi-function device instead of a general computer.
Moreover, the addition of steps such as — “displaying…”, “presenting…”, “providing a user interface for…”, “generating alerts or alarms…”, “sending for display…”, “sending for print…”, or similar other steps that indicate the claimed elements are associated with tangible output may be of help. At the end, to make the inventions non-abstract or look like a real invention we can add certain elements in the claims that focus on outputting tangible output such print outs, user interface, etc. Few exemplary patent publications: US20160026936A1, US20160334972A1, US9282138B2, WO2014028099A1, US20150242728A1 and US9276991B2