JPTOS Editor-in-Chief Personal Notes: Two-Prongs within Step 2A

JPTOS Editor-in-Chief Personal Notes: Two-Prongs within Step 2A

Alexander Sofocleous

Pondering subject matter eligibility, while browsing the aisles of my favorite hardware store, the following fleeting thought entertained my wandering mind: Anticipation and obviousness rejections involve the difference between a claim and prior art. Does subject matter eligibility involve a difference between the claim and a claimed judicial exception? Should it be more challenging to differentiate a claim (as a whole) from elements in the claim than to differentiate the same claim from applied prior art?

While studying USPTO’s notice of examination guidance and request for comments, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), I found it helpful to diagram Step 2A side-by-side the former flow-chart, from 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74621 (Dec. 16, 2014). 

I drew my flow-chart showing how the new guidance divides Step 2A into two prongs and added my notes. The first prong narrows to three specific types of abstract ideas: (a) mathematical concepts; (b) certain methods of organizing human activity; and (c) mental processes. It reminds me of an excellent article authored by the honorable Administrative Patent Judge Hung H. Bui, A Common Sense Approach to Implement the Supreme Court’s Alice Two-Step Framework to Provide “Certainty” and “Predictability,” 100 J. Pat. & Trademark Off. Soc’y 165, 244–250 (2018). The new guidance acknowledges rare circumstances where a claim recites, not one of the three types, but a “tentative abstract idea”; however, such rejections from the examining Corps require Technology Center Director approval, and those from the Patent Trial and Appeal Board “should be brought to the attention of the PTAB leadership by written request for clearance.”

100 J. Pat. & Trademark Off. Soc’y 718 (2019)

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