Arguing A Post-Alice 'Abstract Idea' Rejection At USPTO

Law360, New York (February 5, 2015, 10:13 AM EST) -- Since the federal court and U.S. Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations). Patent applications are also facing similar challenges, with some claims being rejected during examination by the U.S. Patent and Trademark Office, as allegedly directed to patent-ineligible subject matter per the above. What can we, as patent practitioners, do during patent prosecution, to argue for patent claim subject matter eligibility, when faced with such a rejection?...

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