By Christopher Hall & Mike Gencarella
Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals.
The situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea.
The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations. The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered. The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed. Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.