Ever since the Supreme Court waded into the Section 101 Abstract Idea world, there has been a monumental increase in Section 101 rejections by Examiners. The USPTO has provided shifting guidelines over the years trying to keep up with ever-shifting and upredictable test that is at least as abstract as any alleged abstract invention. As discussed in past posts, appealing Alice rejections can be difficult as the Board does not necessarily follow (or require Examiners to follow) the USPTO's own guidelines. 

A recent example illustrates these issues. IBM appealed an Alice Section 101 rejection in US 13/526,905. The invention relates to cloud-based systems focused on addressing power management when running virtual machines for customers. Claim 8 is provided below:

IBM first had to file several appeal briefs due to the Examiner re-opening prosecution. As discussed in previous posts, the USPTO has a serious problem with improper rejections being maintained and forcing applicants to file appeals that should not be necessary, only to have prosecution re-opened. Returning to the present case, the sum total of the reasoning for rejection claim 8 (which the Examiner admitted was non-obvious over the prior art!) was as follows:

IBM presented several arguments in its Brief that seemed to raise some valid points. First, the brief correctly pointed out that the Office did not explicitly address several aspects of the USPTO guidelines, particularly with respect to clearly identifying the abstract idea itself. Second, the brief explained that the claims were much more limited than simply covering the broad idea of distributing a power savings benefit and as such there could be no preemption since many other ways to practice that idea are available. Third, the brief went through a detailed analysis of why the claims provide "something more."

In the end, the Board found that the Examiner made a sufficient showing and was not required to actually follow the USPTO guidelines nor was the Examiner required to cite any case law or deal with the issue of preemption. The PTAB states that:

In this case, the Examiner provided adequate explanation to meet the notice requirement. The Examiner set forth the statutory basis of the rejection, applied Alice’s two-part framework, and sufficiently articulated reasoning in an informative manner, thus, meeting the notice requirement of 35U.S.C. § 132. (citations omitted). There is no requirement for the Examiner to cite examples from PTO guidelines or any additional case law to establish a prima facie case. There also is no requirement under Alice for the Examiner to make an explicit finding as to preemption.

So, if you are appealing an Alice rejection to the Board, and if the Examiner makes even the most minimal of findings (i.e., is able to at least write the words "Alice" and "abstract idea" with some sort of list of claim elements), the PTAB is not going to reverse responsive to arguments that the rejection fails to establish a prima facia case. Here, the claim language that related to metering costs likely tipped the scales as being insufficiently technical, and too close to an economic idea.

As an interesting aside, a machine learning algorithm that predicts whether claims are eligible put this claim at 88% eligible.