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Posts Tagged: "TC 2100"

Eligibility Rejections are Appearing in Greater Frequency Across all Computer Related Technology Centers

Four years after the Alice decision, we seem to just now be detecting the full impact of the decision. The initial response by the USPTO resulted in an somewhat expected increase in the percentage of applications with eligibility rejections from business-method art units. Three years after Alice, eligibility rejections became much more common across the remaining computer-related technology centers (i.e. 2100, 2400, and 2600)… The sudden increase in eligibility rejections from other computer-related technology centers may have a number of causes. For example, case law from the Federal Circuit and the USTPO began to expanded the application of Alice to inventions that appear abstract despite not being directed to a traditional business-method concept… The increase in the percentage of office actions with eligibility rejections in TC 2100 was much higher than the increase in other computer related technology centers TC 2400 and TC 2600. Given that TC 2100 is a primarily software-focused technology center, this trend discrepancy suggests that post-Alice eligibility assessments performed by software examiners present increased challenges for patenting software based inventions.

§ 101 Rejections in the Post-Alice Era

The § 101 rejection rate for patent applications in the e-commerce work groups approaches 100%, then drops precipitously for the remaining seven of the top ten work groups with the greatest percentage of § 101 rejections. Before Bilski, the § 101 rejection rate in the e-commerce work groups hovered around around the 30% mark, but has now tripled. The remaining work groups have also seen their § 101 rejection rates rise by 200-300%, although they make up a significantly smaller proportion of total rejections than in the e-commerce art units. While it did not surprise us that these work groups were at the very top of the list for § 101 rejections, we also wanted to know what other technologies are particularly prone to § 101 rejections.

Alice on Dulany Street: How the PTAB handles 101 in ex parte appeals

In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection. As indicated above, the reversal rate for a § 101 rejection in December 2016 based on Alice was less than 9%. Equally worrying for potential appellants is that some decisions introduced a § 101 rejection even when prior art rejections were reversed. The PTAB seems to have stopped the practice of urging examiners to review the claims for compliance under § 101 in light of Alice, and, instead, has become more active in introducing § 101 rejections on their own.