Showing 4 ideas for tag "101"
(@chrisw)

700 Examination of Applications

706.03(a): Point pro se applicants to Alice guidance

Most Alice rejections I have received recently cite caselaw by name, but do not tell you how to find the decisions themselves. It occurred to me today that this may effectively prevent a pro se applicant from responding to such a rejection.

I propose amending 706.03(a), form paragraph 7.05.015, to refer to the USPTO's web site for information not found in the Action. For example: (>>insertions<< marked)

---
the claimed... more »

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(@chrisw)

MISCELLANEOUS - Appendices and Other

Add a consolidated subject-matter eligibility guidance appendix

The eligibility pages at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility-examination-guidance-date are very helpful. However, as the number of documents grows, the tedium of citing them weighs more and more heavily.

Would the editors please consider including a regularly-updated... more »

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(@chrisw)

2100 Patentability

2106.03, I: clarify Nuijten paragraph "tangible" explanation

Please see MPEP 2106.03, I. (Jan. 2018), at 18, right column. The second non-bulleted paragraph (“paragraph A”) begins: “Even when a product has a physical or tangible form, it may not fall within a statutory category” (at 2100-19). Since paragraph A solely relates to Nuijten,* I suggest revising paragraph A to expressly relate to signals, and to clarify the meaning of “tangible.” For example, I propose revising paragraph... more »

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(@chrisw)

2100 Patentability

2106.04 (1/2018): Enfish "character as a whole" missing

MPEP 2106.04 (Jan. 2018) (at 2100-21, right column) quotes the original 2014 Guidance (79 FR 74618, 74622) that “A claim is directed to a judicial exception when ... an abstract idea is recited (i.e., set forth or described) in the claim.” However, the Federal Circuit’s Enfish decision specifically found that the “‘directed to’ inquiry ... cannot simply ask whether the claims *involve* a patent-ineligible concept.”... more »

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