Can anyone point me to recent (post-Alice) successful examination responses to section 101 for computer implemented inventions (software patents). I am currently prosecuting a s101 objection for a computer implemented method and would be grateful if I could get some guidance based on some previous successful responses.


I attended an IP CLE conference last week and the following cases were discussed in relation to Alice.

  • McRO, 837 F.3d 1299 (Fed. Cir. 2016)
  • Amdocs, 841 F.3d 1288 (Fed. Cir. 2016)
  • Trading Technologies, Inc., CAFC Appeal No. 16-1616 (non-precedential opinion that describes how 101 applies to GUI's)
  • Thales Visonix, Inc., 850 F.3d 1343 (Fed. Cir. 2017)
  • Visual Memory LLC, CAFC Appeal No. 16-2254

All of these cases appear to offer hope to overcoming Alice 101 rejections. A somewhat simple way of looking at this was related by a colleague at the conference: "if the invention improves the computer itself, then it is patentable; if the invention improves how you use the computer, then you may have 101 problems."

  • Thanks for this. I agree with this case law and the precedent that these create. However, I was looking for a s101 objection response in an examination report which I could look at the file wrapper. – Henry David Kissinger Oct 2 '17 at 19:45

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.