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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.

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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  • Trading Technologies, Inc., CAFC Appeal No. 16-1616 (non-precedential opinion that describes how 101 applies to GUI's)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

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