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

Wed Sep 10 17:16:57 UTC 2025

I too have found 1685, and 1631, to be particularly pernicious with § 101 rejections.

I also would like to use that memo for prosecution in Tech Center 1600. I wonder why the USPTO chose to direct it only to certain technology centers and not to the whole examining corps.

-Ben

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Wednesday, September 10, 2025 7:27 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: [Patentpractice] August 4 "reminder" on how to use Section 101

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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