While we wait to see if Congress will overrule the Supreme Court on Section 101, applications are still rejected every day based on the current state of the law. Many Alice decisions boil down to whether the patent application is drafted with a strong focus on technical problems and technical solutions. But what about the claims? Shouldn’t the claims control. Normally, the claim is the name of the game, as Judge Rich said. But Alice turns much conventional wisdom of patent law on its head.

A recent PTAB case illustrates this point (SN 13/489,673). The invention, assigned to IBM, relates to methods and systems for data transfer in bandwidth sharing ad hoc networks. Claim 1 on appeal is reproduced below:

Under a Section 101 analysis, one of the main questions that must be determined is whether the claim is directed to an abstract idea. Normally one would think that this would require analyzing the claim language. However, in this PTAB decision, we see that one way to answer this question is to look to the specification, because “the Specification provides evidence as to what the claimed invention is directed.”

Here, the PTAB determined that the claim was directed to an abstract idea, but nevertheless is eligible because it was directed to an improvement to a particular technology, namely data transfer rates in a non-conventionally arranged, ad hoc network.

So, details of technical problems and solutions in the specification, even if not explicitly recited in the claim, can make a big difference and tip the scales toward eligibility.