PHOSITA

Authored by Ann Robl, January 18, 2018 at 3:43 pm
USPTO

You may be aware that the USPTO has a “Subject Matter Eligibility” webpage with links to resources regarding how patent examiners are to evaluate claims for patent subject matter eligibility under 35 U.S.C. § 101. This month, the USPTO updated their “Quick Reference” sheet of Federal Circuit and Supreme Court “decisions holding claims eligible and identifying abstract ideas,” as well as their chart of subject matter eligibility court decisions (downloadable from the main Subject Matter Eligibility webpage), which was previously referred to as “Appendix 3.”

The Reference sheet organizes the cases by “type” of abstract idea as well as summarizing cases by whether the claims were found to be eligible in Step 2A (i.e., the claim was not directed to a judicial exception) or found eligible in Step 2B (i.e., the claim as a whole amounts to “significantly more” than the judicial exception). The chart provides a concise summary of cases, citations, patent numbers, claim types, judicial conclusion, and whether the case is precedential or not.

Both the reference sheet and the chart can be helpful in arguing Section 101 rejections during patent application prosecution.