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

[Dale Quisenberry]

100% agree!

C. Dale Quisenberry
Quisenberry Law PLLC
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Saturday, 27 April 2024 at 11:23 am
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] Interesting office action re §101 -- just FYI

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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