The discussion questions for the Section's December 2014 roundtable are as follows:
What is the abstract idea that the SCOTUS identifies in Alice Corp v. CLS Bank?
What is the test that the SCOTUS identifies for Section 101 eligible subject matter?
What is the public interest that the SCOTUS expresses concern regarding eligible subject matter? Is this any different that O’Reilly v. Morse, 56 U.S. 62 (1853) with claim 8: “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distance, being a new application of that power of which I claims to be the first inventor or discoverer”?
Is the SCOTUS mixing Section 101 analysis with Sections 102 and 103?
According to the USPTO examining guidelines, what are examples of abstract ideas? When are claims directed to an abstract idea eligible subject matter?
What is the abstract idea that the Federal Circuit identifies in Ultramercial v. Hulu? Why does claim 1 not offer significantly more than the abstract idea?
When is a claim directed to an abstract idea patient eligible subject matter?
What guidance does Ultramercial offer to practitioners?
What have you observed in your practice related to Alice and what guidance would you offer in preparing applications, responding to office actions, or facing litigation involving a invalidity determination?
Materials for the Section's December 2014 roundtable discussion are available here to download:
SCOTUS Alice decision
USPTO memo to Examining Corp
Fed Cir decision Ultramercial v. Hulu from this month citing Alice