Alice-based Abstract Idea rejections are flooding patent applicants at the US Patent and Trademark Office. In Alice case, the Supreme court set forth a test for determining whether a patent claim is ineligible for protection because is merely covers an abstract idea. However, as the USPTO bears the burden of establishing a rejection, it is not clear what level of evidence and explanation is required for the Office to meet its burden. This is important because if the Office has not met its burden, it cannot lawfully reject a pending claim.

While it will take some time for these issues to be clarified at the Federal Circuit, the Patent Trial and Appeal Board has issued some decision dealing with the issue of abstract ideas under Section 101. A recent case, assigned to Nestle, illustrates at least one example of an insufficient rejection to establish a prima facia case of ineligibility. The application relates to "systems and methods for determining a composite rating for sustainability of a brand." Claim 1 recites:

1. A method for determining a composite rating for sustainability for a brand, comprising the steps of:
     selecting a number of sustainability factors that are applicable to the brand;
     associating each sustainability factor with a list of activities pertaining thereto, wherein the activities are ranked by level of sustainability;
     selecting an activity from the list that is an attribute of the brand for each applicable sustainability factor;
     determining a score for each selected activity based on its rank in the list of activities for that sustainability factor;
     calculating the composite rating based on the scores for the selected activities; and
     displaying the composite rating;
     wherein at least one of the steps of the method is performed with a processor or computer.

Anyone familiar with prosecuting cases before the USPTO will immediately recognize this as the type of claim that is likely to draw an Alice rejection under the current regime. In the Examiner's Answer, the Examiner largely relied on the machine or transformation test, which at the time was the USPTO's preferred test for determining subject matter eligibility. However, the Examiner did also include an assertion that the claim was directed to an abstract idea:

Nestle argued that the Examiner had not properly established that the claimed invention was directed to an abstract idea, law of nature, or natural phenomenon. The PTAB found this argument persuasive, determining that this reasoning was insufficient to establish the rejection:

This case illustrates at least one example of what, in the eyes of this particular panel of the PTAB, does not constitute a prima facia case in applying an ineligibility rejection under Alice. Note that the Board has authority to enter new grounds of rejection, and could easily have done so here, yet did not. It will be interesting to see if prosecution is re-opened and a more complete Alice rejection is applied by the Examiner.