[Patentpractice] August 4 "reminder" on how to use Section 101

[Carl Oppedahl]

I imagine that everyone else on the listserv already knew about this.

    Reminders on evaluating subject matter eligibility of claims under
    35 U.S.C. 101 (August 4, 2025)
    <https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf>

I guess the USPTO very quietly posted this to its Section 101 web page 
<https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility>.

Note that it directs itself only to Tech Centers 2100, 2600 and 3600.

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.

The /Reminder/ has a chance, I think, of helping applicants a little bit.

We are all accustomed to the way it seems to work with Section 101.

/*Automatic rejection. */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.

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.

/*Mental process grouping. */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".

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.

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.

/*Analysis of the claim as a whole. */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".

/*Improvements. */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.

The "reminder" reminds the Examiner that if an improvement is shown, 
this ought to lead to the 101 rejection being withdrawn.

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.

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.

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".

Again, I must recognize that everybody on the listserv (other than me) 
already knew about this August 4 "reminder".
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