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<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>
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