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"Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision" This. We had/have no problem getting pa

"Another likely explanation is that patent applicants are adjusting their applications to be in line with the decision" This. We had/have no problem getting past Alice if the application was drafted post-Alice. (Except for one art unit that was being unreasonable -- but even they seemed to have given up. Maybe their boss retired?) Nothing changed except we included additional language in the spec and claims for no other reason than to get around Alice rejections.

hcknwscommenter 6y ago
Really? YOu have some magical language in the spec and claims that universally gets around Alice but (and I'm inferring here) doesn't narrow the scope of your claims? Please please please do tell me what this magical "additional language" is. I am not trying to troll. I am genuinely curious. I have upvoted your post. You can send me a private message if you like.
- pnw_hazor 6y ago
  I call it magic language because it had nothing to with the novelty of the inventions. Note, Alice wasn't the first time this was required. We always adjust the language we use in applications as new case law comes down. Further, gibberish included in claims to defend against Alice rejections usually had nothing do with novelty because Alice was about subject matter patentability not novelty. Before the early Alice guidance came out we tried a lot of different things, much of it superficial in my opinion. Including: emphasizing that the machine did the work; showing that inputs are being transformed into something new by the machine; writing claims that show different parts of the system interacting with each other; and sometimes nonsense like "wherein each foobar is stored in a hardware memory" or "displaying the bizbaz on a hardware display." In some hard cases (mainly apps drafted before there was any Alice guidance or useful case law) we included claim limitations like "modifying performance rates based one or more sensor inputs" (e.g., CPU temperature) Later, when the first case in district court found that a patent satisfied Alice, we started including language verbatim from that case in specs, claims, and office action responses whenever possible. As more guidance memos came out, we included relevant language from those as well. Sometimes this resulted in claims that had a lot of words that were unrelated to the novelty of the inventions. By this I mean, we included limitations that would be present in every computer program/system by default. Storing things, displaying things, two or more processes or machines interacting or exchanging data, receiving inputs from sensors, transforming data from one shape to another, and so on. The specifics could vary for each patent application because art units or sometimes examiners were using different standards before reasonable guidance started coming out. Some patent attorneys focused more on arguing with examiners and appealing Alice rejections. We don't like to argue with examiners, so we typically keep amending claims until they are satisfied. And, then file continuations with broader claims that omit the amendments that didn't work. This type of practice requires high budget applications and may not be practical for everyone. But generally we always could get over Alice using these techniques.

hcknwscommenter 6y ago

Really? YOu have some magical language in the spec and claims that universally gets around Alice but (and I'm inferring here) doesn't narrow the scope of your claims? Please please please do tell me what this magical "additional language" is. I am not trying to troll. I am genuinely curious. I have upvoted your post. You can send me a private message if you like.

pnw_hazor 6y ago
I call it magic language because it had nothing to with the novelty of the inventions. Note, Alice wasn't the first time this was required. We always adjust the language we use in applications as new case law comes down. Further, gibberish included in claims to defend against Alice rejections usually had nothing do with novelty because Alice was about subject matter patentability not novelty. Before the early Alice guidance came out we tried a lot of different things, much of it superficial in my opinion. Including: emphasizing that the machine did the work; showing that inputs are being transformed into something new by the machine; writing claims that show different parts of the system interacting with each other; and sometimes nonsense like "wherein each foobar is stored in a hardware memory" or "displaying the bizbaz on a hardware display." In some hard cases (mainly apps drafted before there was any Alice guidance or useful case law) we included claim limitations like "modifying performance rates based one or more sensor inputs" (e.g., CPU temperature) Later, when the first case in district court found that a patent satisfied Alice, we started including language verbatim from that case in specs, claims, and office action responses whenever possible. As more guidance memos came out, we included relevant language from those as well. Sometimes this resulted in claims that had a lot of words that were unrelated to the novelty of the inventions. By this I mean, we included limitations that would be present in every computer program/system by default. Storing things, displaying things, two or more processes or machines interacting or exchanging data, receiving inputs from sensors, transforming data from one shape to another, and so on. The specifics could vary for each patent application because art units or sometimes examiners were using different standards before reasonable guidance started coming out. Some patent attorneys focused more on arguing with examiners and appealing Alice rejections. We don't like to argue with examiners, so we typically keep amending claims until they are satisfied. And, then file continuations with broader claims that omit the amendments that didn't work. This type of practice requires high budget applications and may not be practical for everyone. But generally we always could get over Alice using these techniques.