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Patent Eligibility: A Response to Rejections Under 35 USC §101

Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible.  This is useful in Office action responses, and appeals.

The situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea.

The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations.  The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered.  The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed.  Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.

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About this Author

Christopher M. Hall, Womble Carlyle Law Firm, patent agent
Patent Agent

Chris Hall counsels clients in preparing and prosecuting patents in the electrical, telecommunications, computer software, and mechanical arts. 

Specifically, Chris has handled patents for:

  • Semiconductor processing, fabrication and integrated circuitry,
  • Optics
  • Optoelectronics
  • Artificial intelligence
  • 3-D imaging and image generation
  • Fault tolerance
  • Robotics

*Chris Hall is a registered patent agent and is not licensed to practice law. His activities are directly supervised by members...

408-341-3051
Partner

Mike Gencarella provides counseling in all aspects of Intellectual Property protection with an emphasis on patent prosecution. With 10+ years of industry experience and 15+ years of legal experience, Mike tailors his advice based on the business needs and budget requirements of the client he is representing and has provided counseling for pre IPO start-ups, as well as multinational corporations. He has extensive experience with a broad range of technologies including:

  • semiconductor fabrication

  • semiconductor processing equipment

  • computer systems

  • computer peripheral devices

  • circuit design

  • graphics processing

  • network technologies

  • mobile payment systems

  • cloud computing

  • social media

  • video games

  • virtualization

  • optics

  • green technology

  • mechanical devices

  • software

  • business methods

  • medical devices

Mike has extensive experience in the prosecution of U.S. and foreign trademark applications and has counseled clients in all aspects of trademark law. In addition, Mike has experience with licensing all forms of intellectual property as well as counseling regarding infringement and validity of U.S. patents.
 

408-341-3015