Office Action Response Argument
(Section 101) (Computer Technology)

Summary

This office action response template provides arguments that you may use when responding to a rejection of patent claims under 35 U.S.C. § 101. This template contains practical guidance and drafting notes. Use this template in combination with Patent Office Action Response to prepare a complete response to an office action that rejects claims based on a lack of patent-eligible subject matter. The current framework for analyzing whether a patent claim is directed to patent-eligible subject matter is set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014) (analyzing eligibility of a computer-implemented method) and an earlier decision, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (involving life sciences technology). The so-called Alice/Mayo framework involves a two-part inquiry. First, analyze whether the patent claim is directed to a law of nature, natural phenomenon, or abstract idea (the so-called judicial exceptions to subject matter eligibility) and, if so, analyze whether additional elements and/or limitations in the claim add anything significant (i.e., an inventive concept). To add something significant that may qualify as an inventive concept, the additional elements must be more than merely well-understood, routine, or conventional activity. The United States Patent and Trademark Office (USPTO) uses a multi-step analysis to apply the Alice/Mayo framework, as set forth in the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Note that when the examiner determines that the claims are directed to an abstract idea, the examiner proceeds with the following inquiries under steps 2A and 2B of the USPTO's guidelines. Step 2A, Prong 1(b) • Is the abstract idea one of the following? o A mathematical concept o A method of organizing human activity o A mental process • If no (i.e., not a math concept, method of organizing human activity, or a mental process), the claim qualifies as patent-eligible subject matter (with rare exceptions). Thus, the analysis ends. • If yes, go to Step 2A, prong 2. Step 2A, Prong 2 • Is the abstract idea integrated into a practical application of the abstract idea? • If yes, then the analysis ends. • If no, then the claim is directed to the recited abstract idea and requires further analysis under Step 2B (where it may still be eligible if it amounts to an "inventive concept"). Step 2B • Does the claim recite additional elements that amount to significantly more than the exception (i.e., an inventive concept)? • If yes, the claim qualifies as patent-eligible subject matter. • If no, the claim is not patent-eligible subject matter. The USPTO's 2019 subject-matter eligibility guidelines replaced the prior USPTO guidelines. The prior guidelines had relied in large part on comparing the claims in the patent application under examination with claims found to constitute patent-eligible or patent-ineligible subject matter in post-Alice Federal Circuit decisions. While the 2019 guidelines no longer require such a comparison, in responding to a rejection under 35 U.S.C. § 101, it is still helps to draw the examiner's attention to Federal Circuit decisions that found comparable claims to be patent-eligible. For a discussion of the USPTO's 2019 examination guidelines on patent-eligible subject matter, see USPTO Patent Subject Matter Eligibility Guidelines 2019. For a quick reference on the sequence of inquiries under the guidelines, see USPTO Patent Subject Matter Eligibility Checklist. For additional information on responding to an office action, see Patent Office Action Response Checklist. For additional statements of law on subject-matter eligibility, see Patent-Eligible Subject Matter (Section 101) Statements of Law.