Showing 4 ideas for tag "alice"
(@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 »

Voting

1 vote
1 up votes
0 down votes
(@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 »

Voting

2 votes
2 up votes
0 down votes
(@jasonliao)

2100 Patentability

Another outline level in 2106.05(I)(A)

Add a "1," before "Limitations that the courts have found to qualify as "significantly more" when recited in a claim with a judicial exception include: "

Add a "2." before "Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:"



If discussing Alice step B, in order to cite the MPEP for any particular class of limitation,... more »

Voting

0 votes
0 up votes
0 down votes
(@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 »

Voting

0 votes
0 up votes
0 down votes