Last week, the USPTO issued further guidelines for patent examiners, instructing that rejections of applications based on ineligibility require detailed explanations for the basis of the rejection.1 This new requirement is distinguished from the previous guidelines by requiring examiners to provide more substantive information in their claim rejections. Along with the guidelines the USPTO issued several examples, which can be useful for examiners and applicants alike.2 The examples illustrate various claim scenarios, appropriate eligibility analysis, and potential applicant responses.3
The purpose of the guidelines is to advance prosecution and allow patent applicants to respond to the rejection effectively.4 For years, examiners claim rejections informed an applicant that a claim was directed to ineligible subject matter, with little further guidance.5 The same was true for applicant’s response assessments as examiners would only assert that the applicant’s response was unpersuasive and failed to overcome the rejection.6
The present guidelines are divided into two categories: “(i) how examiners should formulate a subject matter eligibility rejection under § 101, and (ii) how examiners should evaluate an applicant response to such a rejection.”7
Eligibility rejections should focus on the two-part analysis found in the Interim Eligibility Guidance. Under Step 2A, examiners should identify with specificity what the abstract idea, law of nature, or natural phenomenon is as recited in the claim and then explain why it is considered an exception.8 Under Step 2B, examiners should identify additional elements of the claim and provide an explanation as to why these elements, individually and in combination, are not “significantly more” than the identified exception.9 In formulating these rejections, the USPTO suggests that examiners cite to appropriate court decisions and formulate arguments that are sufficiently clear and specific so as to put the applicant on notice.10
With regard to applicant responses, the UPSTO urges that examiners fully evaluate the arguments raised.11 It states that “[i]f applicant’s claim amendment(s) and/or argument(s) persuasively establish that the claim is not directed to a judicial exception or is directed to significantly more than a judicial exception, the rejection should be withdrawn,” however “[i]f [the] applicant properly challenges the examiner’s findings but the examiner deems it appropriate to maintain the rejection, a rebuttal must be provided in the next Office action.”12
Although it is not immediately apparent whether these guidelines will impact the amount of rejections issued, they are seen as an aid for applicants. More importantly, they will hopefully curb blanket ineligibility rejections that left applicants with little guidance on how to proceed with overcoming the rejections.
2 See generally UNITED STATES PATENT AND TRADEMARK OFFICE, SUBJECT MATTER ELIGIBILITY EXAMPLES: LIFE SCIENCES (May 2016), http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf.
3 See id.
4 Ryan Davis, UPSTO Calls For Clearer Alice Rejections, Aiding Applicants, LAW360 (May 5, 2016, 10:49 PM), http://www.law360.com/ip/articles/792961/uspto-calls-for-clearer-alice-rejections-aiding-applicants?spotlight=1.
5 See id.
6 See id.
7 USPTO Guidelines, at 2.
8 See id.
10 Id. at 2.
11 Id. at 5.
12 Id. at 5.