[Patentpractice] Interesting office action re §101 -- just FYI

[Carl Oppedahl]

Yes I have had this in a few cases in the past two years or so. I agree 
with your reaction to the situation.

TYFNIL imagine the adversary trying to convince the judge and jury that 
the patent should never have been granted because supposedly it was not 
patent-eligible subject matter.  The adversary trying to convince the 
judge and jury that the patent fails to satisfy Section 101.

And the patent owner can point to this place in the file wrapper where 
the Examiner said it /*is*/ patent-eligible subject matter.  The patent 
owner can point to the place in the file wrapper where the Examiner said 
it /*does*/ satisfy Section 101.

Imagine that many judges and juries might say "well, that Examiner is a 
trained professional whose job it is to evaluate this.  Why should we 
second-guess the Examiner on this?"  Many judges and juries might 
observe that the Examiner did not have a dog in this fight.  The 
Examiner was a neutral in this fight.

Yes, I really like the idea of the patent owner having this statement 
contained in the file wrapper.

On 4/27/2024 7:43 AM, Patent Lawyer via Patentpractice wrote:

> I saw something in an office action from the US PTO this week that 
> I've not seen before.
>
> The examiner did a Section 101 analysis (per current US PTO 
> guidelines) and concluded that the claims recite patent-eligible 
> subject matter.
>
> At first glance at the action, I saw a Section 101 header and assumed 
> it was a rejection.
>
> I like this approach and outcome.
>
> If the examiners are doing the §101 analysis anyway, it is nice to 
> have their analysis included in the action, along with the positive 
> conclusion.
>
>
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