July, 18th, 2017

By Joseph V. Hajjar

The Court’s decision in Alice Corp. v. CLS Bank International unleashed a shockwave on the threshold for patent-eligible subject matter. In the technology center for computer software alone, the percentage of § 101 rejections doubled from 16% before Bilski v. Kappos – the 2010 case that initiated this whirlwind – to 32% after Alice. While many inventors and applicants continue to fear its repercussions, top patent prosecution law firms, such as WHIPgroup, consistently overcome the Alice obstacle and obtain broad protection for their clients. One example of the broad scope of subject matter that remains patentable after Alice is Ex Parte Edward L. Palmer, where the PTAB reversed a § 101 rejection and held a method of playing poker and cards for the same constituted patent eligible subject matter.

The Alice test assesses the subject matter eligibility of a patent. The Supreme Court created the test in Mayo Collaborative Services v. Prometheus Laboratories, Inc., then reaffirmed it in Alice. Part 1 of Alice asks if the claims are directed to ineligible subject matter i.e. a law of nature, a natural phenomenon, or an abstract idea. If so, Alice part II asks whether the claims amount to something “significantly more” than a patent-ineligible concept. For example, an abstract idea with an incremental improvement or an added physical structure could become patent eligible.

The inventor in Palmer claimed a unique deck of playing cards and a game in which to use it. The deck comprised a standard fifty-two card deck plus four additional cards with a numerical “1” in each suit. Each card in the deck also included markings that represented different values. The proposed method involved using the deck to play a normal game of poker and concurrently play a game using the valued markings on the cards, thus determining a winner in both poker and the concurrent game.

In applying Alice part 1, the poker invention was undisputedly an abstract idea. In part 2, the examiner fell short in arguing the process (the poker and concurrent game) was not limited to a particular apparatus. Not only did the inventor claim a unique deck of cards, he also described a game that required the use of his specific deck. Therefore, the PTAB reversed the examiner’s rejection because the deck of cards sufficed as something more than an abstract idea, and the methods were tied to that specific deck.

The PTAB’s decision in Palmer demonstrates the scope of eligible subject matter remains broad. The Supreme Court crafted the test to prevent a single patent from being too broad and unjustifiably preventing future invention. Therefore, the test demands the recitation of something that amounts to significantly more than an abstract idea, thereby assuring that the allowed claims do not preempt the use of undisclosed methods. The PTAB’s application of the test here shows that even a poker game can be patented with the addition of a specific feature.

Practice Tips:

  1. When drafting claims, cover specific steps in the process you are claiming to show it is more than an abstract idea.
  2. Be specific enough in your claims to avoid the fear that your patent will preempt future invention.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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