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<p>I stumbled across it about a week ago.</p>
<p>BTW -- while we're on the subject of 101 rejections, I have to
share this snippet:</p>
<p>"In addition, McRO had no evidence that the process previously
used by animators is the same as the process required by the
claims. The Applicant\u2019s claimed limitations and originally filed
specification provide no evidence that the claimed
process/functions are any different than what would be done
without a computer, where there are no adjustments to the mental
process to accommodate implementation by computers. For the
reasons explained above applicant\u2019s arguments are not persuasive."</p>
<p>I wonder if anybody besides me is struck by the pivot in burden
of proof between sentence 1 and sentence 2 (which, by the way is
not even factually accurate but that's a different discussion).</p>
<div class="moz-cite-prefix">On 9/10/2025 9:26 AM, Carl Oppedahl via
Patentpractice wrote:<br>
</div>
<blockquote type="cite" cite="mid:11398889-83c9-46e4-9382-1e9f8bcb508d@oppedahl.com">
<p>I imagine that everyone else on the listserv already knew about
this. </p>
<blockquote>
<p><a moz-do-not-send="true" href="https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf">Reminders
on evaluating subject matter eligibility of claims under 35
U.S.C. 101 (August 4, 2025)</a></p>
</blockquote>
<p>I guess the USPTO very quietly posted this to its <a moz-do-not-send="true" href="https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility">Section
101 web page</a>.</p>
<p>Note that it directs itself only to Tech Centers 2100, 2600 and
3600.</p>
<p>One of my AI-related headache cases is in Art Unit 1685
(Nucleic acid assay, Combinatorial and Computational Chemistry,
Combination Biology and Computer Science). I plan to cite this
Reminder to my Examiner, but I anticipate that my Examiner will
refuse to give it any mind since it does not say that it is
directed to Tech Center 1600.</p>
<p>The <i>Reminder</i> has a chance, I think, of helping
applicants a little bit.</p>
<p>We are all accustomed to the way it seems to work with Section
101.</p>
<p><i><b>Automatic rejection. </b></i>It seems pretty much
automatic nowadays that if "in a computer" appears in a claim,
there will be a Section-101 rejection. Same thing for computer
software. And absolutely always it happens if, in a text
search, the words "neural network" or "AI" appear anywhere in
the patent application. </p>
<p>The "reminder" says no, it should not be automatic to do this.
The "reminder" says to do this only if a preponderance of the
evidence says the rejection is appropriate. The section-101
rejection should not be imposed if the likelihood of success is
49% or less.</p>
<p><i><b>Mental process grouping. </b></i>We have all seen the
fairly standard approach these days for rejecting a method claim
under Section 101. The Examiner avoids considering the claim
"as a whole" despite the law requiring exactly that. The
Examiner dissects the claim into a first part and one or more
second parts. The first part is some grouping of steps that are
called the "abstract idea" part. Normally what is also stated
is that everything set forth in this first part can be performed
in the human mind. The other parts are dismissed as "mere
insignificant post-solution activity" or as insignificant parts
that fail to bring the abstract idea back into the world of
non-abstract things. The claim might say "taking the results
from the previous step and chiseling them into stone and
dropping them into the ground, generating a 3 on the Richter
scale" and still this would be dismissed, without support, as
supposedly being "mere insignificant post-solution activity". </p>
<p>And later after you respond to that rejection, it is completely
routine that absolutely every argument you have made is
unpersuasive. No explanation why, but unpersuasive.</p>
<p>The "reminder" reminds the Examiner that the Examiner cannot
just arbitrarily construct the "mental process grouping". The
Examiner is reminded, for example, that it is inappropriate to
include in this grouping any step that cannot, in fact, be
performed mentally.</p>
<p><i><b>Analysis of the claim as a whole. </b></i>So now we turn
to the parts of the claim that are not in the mental process
grouping. It is routine that the Examiner takes one of those
parts (the inevitably "insignificant" part that fails to bring
the claim back into the real world of non-mental-step activity)
by itself. But the "reminder" reminds the Examiner that the
Examiner is not allowed to do this. The Examiner is required to
analyze the claim "as a whole".</p>
<p><i><b>Improvements. </b></i>One of the ways to escape the
"abstract idea" line of attack, and the "mere mental steps" line
of attack, is supposedly to point to a "Step 2A prong two"
consideration such as an improvement in the functioning of the
computer, or maybe even an improvement in the functioning of
another technology. When I am responding to a Section 101
rejection, I often point to such an improvement. (Fortunately,
many of the AI and neural network patent applications that I am
handling these days have the good luck to contain an
"experiments" section that explicitly shows such an improvement
in the experimental results. The neural network runs a bit
faster, or gets the right answer more often, etc.) Invariably
the Examiner dismisses this part of my response as "unpersuasive
argument" with no explanation why it is unpersuasive.</p>
<p>The "reminder" reminds the Examiner that if an improvement is
shown, this ought to lead to the 101 rejection being withdrawn.</p>
<p>Interestingly, the "reminder" actually says the Examiner is
supposed to look through the spec to see if maybe the applicant
actually addressed this in the spec. So maybe the "experiments"
section that shows some improvement ought to prompt the Examiner
to have the self-control to refrain from imposing the
section-101 rejection in the first place.</p>
<p>Even more interestingly, the "reminder" tells the Examiner that
the specification does not even need to explicitly set forth the
improvement. Suppose that it is the case that the improvement,
even if never set forth at all in the specification, would
nonetheless "be apparent to one skilled in the art". If so, the
Examiner should have the self-control not to impose the
section-101 rejection.</p>
<p>Still even more interestingly, the "reminder" tells the
Examiner that this "improvement" need not be recited in the
claim. It is enough that this "improvement" be set forth only
in the spec. (Or, see previous paragraph, maybe the
"improvement" need not be in the spec. Maybe all we need is the
fact that one skilled in the art would find it to be "apparent".</p>
<p>Again, I must recognize that everybody on the listserv (other
than me) already knew about this August 4 "reminder". </p>
<br>
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