… And Here Comes “Alice”!

tall-alice

Don’t look now, but it appears the post-Alice USPTO guidance regarding patent eligibility has kicked in.

The following is a form paragraph recently used by an Examiner at the USPTO in a rejection of certain process claims:

“Claims 1-49 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non statutory subject matter. In the instant invention, the claims are directed towards the concept of tracking the status of a job application submission package. Tracking the status of a job application submission package is considered a method of organizing human activities, therefore the claims are drawn to an abstract idea. The claims do not recite limitations that are ‘significantly more’ than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 1-49 are directed to non-statutory subject matter.”

What this Examiner has done is apply the framework from Mayo as I described in an earlier blog:

Step 1) Determine if a claim is to eligible subject matter.

  • In this case, the claimed “tracking the status of a job application submission package” is a process.

 

Step 2) Determine if the claim is barred by a judicially-created exception, wherein a two part analysis applies to the abstract idea exception:

Part I) Determine whether the claim is directed to an abstract idea.

  • This is the preemption test (Note:  I believe the form paragraph would have been more correct to read “[t]racking the status of a job application submission package is considered a basic tool of organizing human activities.”) The Examiner, therefore, must be concerned that the claims may subsume all possible applications of the process of “job application tracking” in the U.S.

 

Part II) Determine whether the identified abstract idea has been applied in an eligible manner.

  • This is the disembodiment test.  The form paragraph first relates that “job application tracking” is not being applied in the claims as an “improvement to another technology or technical field” (e.g., no “job application tracking” as applied to, say, streamlined immigration of foreign high-tech workers).  Had the Examiner found such an application of the abstract idea of “job application tracking,” the claims could have been patent eligible without regard to further limitation to computer-implemented embodiments(!)   But, because the Examiner found no such application, the disembodiment test continues as the form paragraph goes on to relate that no “improvement to the functioning of the computer itself” is present that may qualify as the practical application (e.g., no “job application tracking” as advantageously implemented, say, on a worldwide network of distributed processors and data stores that execute rules to automatically match applicants to best-fit jobs using a combination of applicant-supplied data, of publicly available data about the applicant, and of proprietary vendor data about the applicant).

 

Formula:  “Job application tracking” applied to <nothing> and executed on a generic computer = Applicant wants to own “job application tracking” = patent ineligible

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