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

Sat Apr 27 23:34:42 UTC 2024

I once had an Examiner issue an Allowance that had 4 pages of arguments in favor of patentability over the prior art… the arguments were like what us practitioners would submit in response an Office Action.

I talked with the Examiner about it… thanked him for doing my job.  He laughed and said that he was writing and Office Action, but then talked himself out of the rejections… so he put all his reasoning/arguments in the reasons for allowance.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Dale Quisenberry via Patentpractice
Sent: Saturday, April 27, 2024 12:26 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: Re: [Patentpractice] Interesting office action re §101 -- just FYI

100% agree!

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto: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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