During patent prosecution, the U.S. Patent and Trademark Office may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC §101. The USPTO is considering cases on an individual basis, and has issued examination guidelines for patent subject matter eligibility, following the federal and U.S. Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. How do we, as patent practitioners, apply factual findings to argue for eligibility of subject matter in claims?
Factual findings based on 35 USC §102 (anticipation) and/or 35 USC §103 (obviousness) analysis build a powerful foundation in answer to a 35 USC §101 “abstract idea” rejection of patent application claims. Reginald Ratliff, a colleague of mine in the Silicon Valley office of Womble Carlyle, has developed a specific model for a reply to an Office action regarding such a rejection, and he has given permission for me to share and expound upon this. Below is an abstraction or template for a response to an Office action.
Distinguishing Limitations in the Claims
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