Request for Continued Examination | Get Off The RCE Merry-Go-Round

“It’s annoying to hear – your arguments are not persuasive or they are considered moot in the view of new grounds of rejection

Negotiating a Patent with the Examiner

Patent prosecution begins with filing a patent application before the USPTO. The examiner then sends an office action detailing the rejections based on prior art references, ineligible subject matter, etc.. In response to the rejections, you will be required to document your arguments and amend your claims as needed. These are tasks that require great attention to detail, and can be particularly daunting during the nascent stages of your career, when you are still learning to effectively analyze office actions and prepare winning responses

Once you have responded, it is of course possible that the examiner might not find your arguments persuasive, or might come up with new prior art references, and send you another rejection. Sometimes, this may lead to a rejection being denominated as a new ground of rejection, despite the core of the rejection not having been changed.  Despite all your efforts, after going back and forth on office actions, you land up with a final rejection. Then what do you do? You request for continued examination.

Request for Continued Examination (RCE)

Isn’t it ridiculously frustrating when the examiner says that either your arguments are not persuasive or they are moot in view of a new ground of rejection, particularly one that, at its core, was the same thing that you’d been fighting? After your final rejection, you might decide to file a Request for Continued Examination (RCE) under Title 37 of the Code of Federal Regulations (CFR) § 1.114. You will need to again make arguments and amend your claims in the RCE, but even this might be futile. 

In my early years as a patent prosecutor, the most exasperating part of the process for me was what I call the ‘RCE merry-go-round’. As per the USPTO patents pendency data in May, 2021, the average total pendency time of an application without RCE is 22.8 months. The pendency of applications which include at least one RCE is more than twice that, at 46.2 months. With an RCE, you can feel like you are going around in circles most of the time, without moving ahead in the prosecution process. This was one of the most frustrating aspects of my early career as a patent prosecutor, and discovering how to avoid it has made my patent prosecution substantially more rewarding.

Alternatives to RCE

In order to understand how I got off the RCE merry go round, I think it makes sense to start by looking at the alternatives.  To my mind, there are two: (1) abandon the application, or (2) appealing the rejection.  When I started my career, these seemed like false alternatives.  Abandoning the application obviously means that (absent continuations or other related cases) there will be no patent, while appeals are both long and expensive.  Additionally, abandonment and appeals both have a certain finality to them, while RCEs are like a siren song whispering that an allowance might be right around the corner.  However, one of the defining characteristics of a merry-go-round is that you can go around forever.  Accordingly, to get off the RCE merry go round, it is necessary to accept the alternatives, and I have found that the most palatable way to do this is to plan for them from the beginning and set your goal as having no RCEs.

Laying the Groundwork for an Off Ramp

To understand how to avoid the RCE merry go round, let’s work backwards from the point where you have received a final rejection.  If you are going to abandon the case, it would mean that whatever protection may be available is not significant enough to be worth fighting for.  For example, the examiner may have found a prior art reference that is so close that any innovative features that aren’t described in that reference aren’t commercially relevant in any case.  If you are going to appeal, it would mean that you have made all of the arguments that are worth making but still reached an impasse with the examiner.  The question then, is how do you get to the point where there are no arguments worth making on any commercially significant feature after only the second office action? I have developed two guidelines which have served me well, and which I believe are generally applicable to prosecuting cases while avoiding RCEs.

#1. Include All Your Points of Novelty in Your Claims

By including all of the features you may want to use to distinguish the prior art at the outset, you can avoid a scenario in which you end up having to file an RCE to add a limitation distinguishing a newly cited reference.  The result of this is that my claim sets generally look like trees, with broad independent claims and then multiple, relatively deeply nested sets of dependent claims.  For example, if there are multiple innovative ways of implementing a commercially significant feature, I will generally have a branch of dependent claims for each.  This way, if the potential to protect one branch is pruned off by the prior art, I can still point to another branch as innovative without having to make an amendment that could trigger a final rejection.  Similarly, if the claims recite all of the commercially meaningful novel features from the outset, then if I reach an impasse I can be confident that any additional tweaks will, at best, result in a patent directed to something that isn’t commercially significant.  In that situation it is easy to recommend an appeal, and to avoid getting on the RCE merry go round in the first place.

#2. Be Very Concrete

There’s a phrase in patent drafting called “picture claim.” This term is often used as a pejorative, but in actuality, it can be quite helpful to have a picture claim or two included in your claim set.  As they say, a picture is worth a thousand words but the real concept is not to have a lot of words but to have words that are very concrete. It means that your claims are going to very concretely focus on something that is

a.  Of value to your client (e.g., the preferred embodiment of their commercial product);

b.  Unlikely to be covered in a generic reference written by someone who didn’t actually implement your technology.  

Having this type of picture claim is useful because it can avoid getting trapped in multiple rejection-response cycles (and therefore RCEs) due to disputes over wording.  This is particularly critical because the broadest reasonable interpretation rule means that examiners are almost certain to prevail if there is a dispute on how a claim can be interpreted.  However, if you have a concrete claim at the end of your dependency tree, then you will be much less likely to be in a position where there’s a misinterpretation, and so you can be confident that any impasse is likely to reflect a substantive disagreement with the examiner which can’t be resolved by any amount of RCE-enabled tweaking.  Once again, you can straightaway head to the appeal route without getting on the merry-go-round.


That’s how I avoid getting on the RCE merry-go-round. I know, it absolutely increased my quality of life as a patent attorney. I used to feel that there must be something wrong with me that I could not seem to get my case allowed. I would make changes an examiner seemed to be comfortable with in an interview, just to have him or her issue another rejection and avoid addressing the changes I just made by saying they are moot in view of a new ground of rejection I felt didn’t change anything.  This was annoying and felt awful.  However, by using a logical approach that plans for appeals from the outset, if you reach an impasse you can be confident you did your best and not feel any temptation to continue to futz around. You can even reduce the number of appeals by avoiding certain obvious mistakes while responding to office actions.

You can also check out our tool, Arguminer, which analyzes your office action and matches it with responses most likely to put you on track for success. It’ll help you reduce the frustration of patent prosecution by providing proven arguments, which experienced attorneys have used to overcome their toughest rejections. I have been able to get past this unpleasant chapter of being trapped on the RCE merry-go-round during my career and I hope with the above guidelines, you are able to get off it too.

IP Toolworks Demo

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

4 Requirements of a Concrete Intellectual Property Collaboration Agreement

“Having loose ends in an intellectual property collaboration agreement can lead to disaster.”

An inventor has a brilliant idea but doesn’t have the capability to implement it. He needs a developer (on a contract basis) who has the required technical expertise to help with the implementation. Now, you play a crucial role in defining the terms of the contract between the inventor and the developer. You need to lay out an IP collaboration agreement so that both parties have a fair deal while collaborating over the project. 

In this article, I am going to cover four requirements to help you design an agreement that is able to satisfy the interests of both the parties by following the guiding principle of concreteness. I will conclude by sharing a yardstick that can help you determine if you have met the requirements successfully.

Alternatively, you can watch this video to understand the requirements for concrete drafting.

IP Collaboration Agreement | 4 Requirements

In order to draft an effective intellectual property collaboration agreement, you must account for four things. The contract must be:

  1. On specification: be very clear on whatever is being delivered
  2. On budget: a milestone-based payment system can protect the interests of both parties
  3. On time: a systematic approach to tracking progress can prevent development from going off the rails
  4. And demonstrate fairness: neither party should feel tricked 

These items may sound simple, but it is very important to get all four requirements on point in order to deliver a concrete intellectual property collaboration agreement. The watch word here is “concrete.”

Requirement #1 – On Specification

The first requirement is to be ‘on specification.’ This means that you must be very clear on what is being delivered. This may not be as simple as it sounds, particularly when the project is in the research and development stage, as the inventor may provide a good idea of the final product, but not supply detailed requirements for its implementation. It may be the case, for instance, that an A/B test is required as part of development, the results of which will lead the project in one of two different directions. The agreement needs to cover both potential paths and must be equipped to fill-in where documentation of the software development is lacking.

The Guiding Light of Concreteness

To deal with situations like this, or whenever in doubt, my advice is to return to the guiding light of concreteness. It may also help to think of the contract you are preparing as a mutual service agreement rather than a delivery agreement. It is possible that the project will involve a design or testing phase, which can cause understanding of the final product at time of drafting to be fuzzy. The mutual service agreement must lay out a framework to ensure that at the project’s conclusion, regardless of what is being delivered, both parties are liable to protect each others’ rights. You also may find it useful to look to training materials or any other documentation associated with the product, to help you mention development requirements in a more concrete way. 

Always make sure all hidden requirements by both parties are not hidden (pun intended) in the contract.

Requirement #2 – On Budget

The second requirement for a concrete intellectual property collaboration agreement is to be on budget.  Here some issues arise due to deviating interests: the buyer wants to pay less, and the developer wants to be paid more. A client needing a research and development agreement with their developer, might wonder why the developer’s budget is so high or why, during the course of development, they demand more money than the amount initially set. This client may want to have the product delivered before making the payment. The developer, in contrast, may well desire to be paid in full before beginning work on the project. To ensure a harmonious working relationship, you will need to ensure that these kinds of issues are addressed up front in the agreement you draft.

Milestone-Based Payment System

One strategy for avoiding friction in these scenarios is to adopt a milestone-based payment system in which payments are linked to each specific phase of a project, as they are completed. This allows your client to have greater transparency around what is being delivered and allows developers to be more specific about the job description and payments they are charging. This arrangement might be structured with an initial payment, followed by milestones and an end-payment upon completion, to keep both parties on the same page throughout the development process.

One thing to keep in mind is that it might not be possible to set a concrete budget at the start of a project because the developer might not know how much time will be required for research, or how extensive that research will be, until development is underway. Therefore, it can be useful to suggest that the development process be systematically tracked, in parallel to milestone payments, to ensure that the terms remain as concrete as possible.

IP Toolworks Demo

Requirement #3 – On Time

I recall a case where the buyer kept-on paying the developer without tracking the progress of the project, only to discover that what the developer delivered some time later was completely unusable. This not only wasted tremendous resources but ruined the relationship between the buyer and the developer. This is a reminder that it is important to cover the time aspect in the agreement. You can suggest the concept of time-bound milestones tied to variable payments on terms favorable to both parties, and further recommend that the agreement include provisions for scheduling regular meetings to track the development progress.

Requirement #4 – On Fairness

The fourth and final requirement in a concrete intellectual property collaboration agreement is that neither party should feel tricked. Two parties working together generally desire a good relationship throughout the course of engagement. However, contracts can be written in such a way that the parties may have divergent assumptions and incentives when things do not go as expected. In these types of situations, you should ‘play the tape till the end.’ Let’s look at a few examples where finesse is needed to ensure there is no perception of unfairness, from both the buyers’ and the developers’ perspectives.

Buyers’ Perspective

On situation where a buyer may feel that the developer is behaving unfairly is when the developer does not want to provide source code to the buyer. The developer may suggest that the buyer should make an additional payment to buy the source code, as the  developer believes the source code is his intellectual property right. Further the developer might state that as the code is his expression of an idea, he has claim to any copyright or patent that might be filed on the resulting work product.  In such scenarios, even though the buyer was not actually tricked, but rather unclear on the terms upfront, he may well feel that he was being tricked. Therefore, if source code will be produced as part of development, it is important that there be either agreed pricing for the intellectual property transaction, or clarity in the ownership of the code mentioned in the contract itself.

Developers’ Perspective

A situation where a developer feels that the buyer is being disingenuous may arise when the buyer changes his mind during development, and decides to discontinue working with the developer. This can be completely catastrophic for the developer, as it means a planned revenue source is unexpectedly derailed. The buyer likely has valid reasons for making such a decision such as a change in business model or that he is selling the license to someone else.  To cover for such situations the intellectual property collaboration agreement should be concrete, with clauses that account for such eventualities, to ensure that neither buyer, nor developer, is primed for unpleasant surprises. 

The Yardstick

The contract should be recognizableIn any of the situations where things are not going as mutually agreed, the developer and the buyer should be able to look at the intellectual property collaboration agreement and be able to identify a possible way out without needing your help. But what if the involved parties are not able to resolve the conflict and your intervention becomes necessary?  Then, of course, you can offer your assistance, which may include performing research or finding people with subject matter expertise, to gain additional knowledge about the situation that can help identify what could be done to make things correct.  


Clearly specifying:

  • software development requirements 
  • a milestone-based payment system 
  • a structured approach for timely tracking of the development progress
  • and ownership of the intellectual property (e.g. source code)

can help you prepare a concrete intellectual property collaboration agreement. 

Even after careful drafting, there remains a small possibility of conflict between the parties, at which point, seeking help from subject matter experts can help you find a way out.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

In re Stanford: Ruined by a Processor and a Memory

“The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to bring clarity to an area of law that desperately needs it.”

Computer boilerplate – such as including “a processor and a memory” in claims – is commonplace in patent applications. However, the recent case of In re Stanford shows that this can be a double-edged sword, having the potential to both undermine an application and to ruin an opinion that could otherwise have shed light on several of the thorniest open questions in patent eligibility jurisprudence. Skeptical that such a common practice could be so counterproductive? Read on.

Language with No Benefit

From the outset, the invention in Stanford is not one where computer components should have had any particular significance. The invention was not a new type of computer, or a new component, such as an innovative processor or memory. Instead, it was (at least according to Stanford) a significant advance in the field of genomics. Many types of analysis required for genome interpretation are dependent on haplotype phasing – i.e., determining whether a gene was inherited from a person’s father or mother. The Stanford invention used a particular type of model with particular states – a hidden Markov model with inheritance, compression fixed error, and MIE-rich fixed error states – to perform haplotype phasing. This significantly increased the resolution of haplotype phasing, moving from 80% in the prior art to 97.9% for phasing using the Stanford invention.

Despite the fact that the Stanford invention was not, and did not purport to be, an improved or a novel computer, both the claims and description of the Stanford application included computer components. The description explained that “the present invention relates to methods, techniques, and algorithms that are intended to be implemented in a digital computer system” (application 13/445,925, paragraph 56), before saying that “such a digital computer or embedded device is well-known in the art” (id.) and providing a description of a generic computer system that is repeated in a variety of other Stanford patents and applications (e.g., U.S. 8,966,413, U.S. 2013/0073329). The claims included similar generic computer language, with limitations requiring various steps of the innovative haplotype phasing method to be performed “on a computer system comprising a processor and a memory” or “using a computer system comprising a processor and a memory” being added to the claims in response to a rejection under 35 U.S.C. § 101.

From Ineffective to Detrimental

Stanford does not appear to have benefitted from the generic computer language in their application and, to the extent that language had any impact at all, the impact appears to have been negative. The addition of computer language to the claims did not convince the examiner to withdraw the 101 rejections. Instead, the examiner stated that “[t]here is no limitation in the claims that the claimed computer program or computer uses other than a generic computer,” maintained the rejection and made the successive office action final. (Office Action of 7-9-2015 on application 13/445,925). On appeal, the computer language appears to have gone from having no effect to being actively detrimental. The patent trial and appeal board explicitly referenced the application’s generic computer system description when explaining that “the claimed method does not teach a technical improvement in a computer processor, but rather use the computer as a tool to improve data analysis.” (Ex parte Dewey, Appeal No. 2018-005489, on application 13/445,925 (PTAB 2019) at 11). Similarly, the Federal Circuit specifically noted the claims’ recitation of a “processor” and a “memory” in support of its statement that “it is hard to imagine a patent than that recites hardware limitations in more generic terms than the terms employed in claim 1.” (In re Stanford, Case No. 20-1012 (Fed. Cir. 2021) at 11). Unsurprisingly, the attention paid to aspects of its application which were admittedly not innovative did not bode well for Stanford, and its appeals were unsuccessful at both the Patent Trial and Appeal Board (PTAB) and the Federal Circuit.

A Missed Opportunity for Clarity 

The attention paid to the non-innovative aspects of Stanford’s technology also made the Federal Circuit’s opinion much less useful in terms of clarifying the proper application of section 101. Looking purely at the law, it would have been reasonable to expect the Federal Circuit to have found the Stanford claims eligible. In McRO, Inc. v. Bandai Namco Games America, Inc., the Federal Circuit had already dealt with the eligibility of a method which used an assertedly innovative computational tool to improve an inherently computerized process, and found that claims which recited the tool with sufficient specificity were not directed to an abstract idea. Additionally, McRO clearly undercut the reasoning used by the PTAB to find the Stanford claims ineligible – i.e., that they recited steps that could be performed in the mind or recited mathematical concepts – since the McRO claims had also recited mathematical concepts (i.e., determining morph weight sets based on phoneme subsequence timing) and improved a process that not only could be, but actually had been performed in the human mind (i.e., synchronizing character and lip models in computer animation). If the Federal Circuit was going to find Stanford’s claims ineligible, it had the opportunity to significantly clarify the rules of subject matter eligibility by clearly distinguishing McRO. It did not. Instead, its only mention of McRO was to note that the PTAB had distinguished that case because the McRO claims “improve ‘the computer animation process itself.’”  In re Stanford, at 6. It then stated that “we are not persuaded that claim 1 is not directed to an abstract mathematical calculation” and “we are not persuaded that the process is an improved technological process.” (id. at 10). No explanation whatsoever was provided for why an improved haplotype phasing process was not “an improved technological process” while an improved computer animation process was. Similarly, no explanation was provided for why Stanford was doomed for reciting mathematical calculations while McRO was not. Indeed, it appears that the most important factor for the Federal Circuit was that the claims recited “a processor and a memory” without purporting to improve them, since it saw fit to explicitly state that:

Notably, claim 1 neither requires nor results in, a specialized computer or a computer with a specialized memory or processor. Indeed, it is hard to imagine a patent claim that recites hardware limitations in more generic terms than the terms employed by claim 1.

Considerations Going Forward

The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to bring clarity to an area of law that desperately needs it. More ominously, it also raised the question of whether the nigh-ubiquitous practice of including form computer language may need to be rethought, since if the Federal Circuit puts so much weight on “a processor and a memory” in claims which recite those terms, maybe it would be better to omit them all together to avoid falling into the trap of having to assert an improvement to the processor and the memory, rather than being able to focus on the actual invention an application is intended to protect.

Originally published on IPWatchdog.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Three Steps To Achieve Effective Delegation | The Gamechangers

If you want to do a few small things right, do them yourself. If you want to do great things and make a big impact, learn to delegate.”  

– John C. Maxwell

Do you ever feel as if your to-do list is never-ending or you are always short of time? In a survey conducted by the Institute for Corporate Productivity (i4cp), it was revealed that 46% of companies have a high level of concern about their workers’ delegation skills. Delegation of work takes a great deal of unlearning, particularly if you are of the habit of doing everything yourself. You will need to let go of the adage, “If you want something done right, you must do it yourself.”

At some point in your career, you will undoubtedly have achieved enough experience in your practice to have younger attorneys working under your guidance. When the time comes, you will have to learn a whole new set of skills to pass on the torch in a way that is productive both for them and for you. Delegation of work might not be easy but when done well it has tremendous value both in maximizing the limited hours you have available in a day and in allowing younger attorneys you might be assigning tasks to to learn the tricks of the trade.

As challenging as delegation can be, these three steps will help you delegate effectively:

  1. Delegate everything you can
  2. Recognize the things that can’t be delegated
  3. Change your ‘cannots’ into ‘cans’

#1. Delegate Everything You Can

Try to delegate every task which can be delegated to your team. If you don’t delegate, you’ll always be overburdened, putting you at risk of missed deadlines and slippages in work.

Once you start delegating, you’ll soon realize that it:

  • Reduces your mental load
  • Saves time
  • Improves client relations

For example, you don’t need to deal with invoice disputes yourself. If your client thinks that your billing hours are too high, let one of your (less senior) team members tackle the situation.

The delegation will have the added benefit of freeing up your mind and time to better handle the more important tasks on your plate, resulting in a job well done.

#2. Recognize the Things That Can’t be Delegated

You need to know what you can and cannot delegate. If you are anything like me, you won’t let anything get out of the door on your project, unless you are completely comfortable with it. If you delegate work to a team member who cannot handle the particular task, you’ll end up doing it yourself, which is an inefficient use of everybody’s time. Often, the task will end up getting done twice, as it is easier to redo something from scratch than to fix somebody else’s shoddy job.

To avoid this situation, you need to recognize which tasks can be delegated to your team and which you have to handle yourself. While there will always be some level of rework when delegating tasks, especially when you are training someone, it is important to consider the strengths of your team members when making assignments. You don’t want to delegate a task that your team member might still be too inexperienced to handle. Thus, the key is to delegate all you can, but to also recognize what you cannot delegate.

IP Toolworks Demo

#3. Change Your ‘Cannots’ Into ‘Cans’ 

The final step to effective delegation involves a special alchemy: transforming your ‘cannots’ into ‘cans’. To achieve this, a few things are essential:

Recognize the Strengths of Your Team Members

Knowing the strengths and abilities of your team members is key. For example, one colleague might be good at drafting patent applications, while another might be good at analyzing office actions in order to draft a meticulous response. Acknowledging these strengths will make your job reviewing their work easier and faster. Everyone wants their team to do a spectacular job—because, let’s be honest, at the end of the day, you are still accountable for the work done by your team. Therefore, learning what to delegate to whom is an art, which you need to master as a leader.

Train Your Team Members to Overcome Weaknesses

You also need to recognize the areas where your your team members might be less capable. Once these areas are identified, training can be provided to turn weaknesses into strengths. It is essential to build support for people working on the tasks you assign. For example, you might provide a library of template communications, to give your team members examples of how to respond to a particular kind of communication from the USPTO. This will make it much easier for a newer attorney to put together the expected response.

Provide The Right Kind Of Support At The Right Time

Make sure that while delegating, you provide your team members with the support they need when they need it. For example, if you have tasked a colleague with analyzing an office action and drafting a response, you must explain what to look for and how issues can be tackled. You might want to point out key areas to focus on and refer them to your library of office action responses for additional guidance.

As a matter of habit, during the last fifteen years of my career, I put together a document containing examples of successful office action responses, to help with future responses. It was, in effect, a small library of office action responses that I could use in my own practice and share with colleagues I might be assigning work to. Eventually, I thought, why not build a library of office action responses that encompasses the work of other attorneys as well? This is when I put together the Arguminer software. It allows you to upload your office action and will analyze various parameters within it to match it with relevant responses other attorneys filed. It looks something like this:

You can customize the results by selecting different parameters, such as successful responses to office actions by the same examiner. You might want to show your team member the arguments used in similar office responses, which will have higher chances of succeeding.

Getting a younger attorney to get the same results as you would, is good delegation, which is exactly what this software helps to achieve.


The more you delegate, the more trust you place in your team members. It boosts their confidence, helps in improving the overall team effort, and gives you time to focus on more important tasks.

Practicing good delegation also gives you a breather to concentrate on the things that are important to you. This is a special category of “non-delegable duties” that for me includes making time each night to spend with my one-year-old daughter before bed. There are some things I don’t assign out, even on my busiest days.

 I believe that the more you can outsource, automate and delegate out, the more time you have for your family and loved ones.

Good luck! I hope you can put Arguminer to use, to effectively delegate and train the young attorneys working with you. 

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

3 Anti Alice Responses to Overcome §101 Rejections in Molecular Biology

Patent lawyers love the overused quote from Diamond v. Chakrabarty, “everything under the sun invented by man.” Forty years later, this remains good law in most situations. However, Mayo v. Prometheus and AMP v. Myriad Genetics went on to make clear that not everything under the sun is patentable when it comes to biology. Most recently, Alice, and the associated 2019 PEG have come to dominate how examiners and attorneys approach subject matter eligibility arguments, even when it comes to inventions within the life sciences.

Even with the most conscientious claim drafting, rejections under §101 are not unlikely when the claimed subject matter centers on organic molecules or other “products of nature.” Given the dynamic state of legal arguments in this field, it can be particularly helpful to look at successful responses prepared by other attorneys facing similar rejections.

If you are dealing with §101 rejections involving molecular biology, or other technology classes where “natural phenomena” are frequently cited, you may want to consider taking a prong, (or better, two), from the winning arguments we’ve selected,  below:

Molecules Created Through Human Efforts Can Lay a Path

If the subject matter is artificial, it does not fall under a judicially-created exception to §101 and, therefore, constitutes patent-eligible subject matter.

In biology cases, the examiners typically rely on the “natural phenomena” judicial exception in their §101 rejections. The Patent Office does not want to be responsible for issuing a patent on a biological matter that occurs naturally. This would potentially turn every living organism into an infringer.

To overcome this rejection under the Alice test and the 2019 examination guidelines, you must show the subject matter does not fall into the “natural phenomena” category or the claims include substantially more than a natural phenomenon. Where the claimed subject matter is artificial and the hand of an engineer or scientist is needed to produce it, the invention is legitimately the product of human ingenuity and human effort must be made to infringe the claims.

This argument succeeded in an application for a “Vesicular Linker and Uses Thereof in Nucleic Acid Library Construction and Sequencing” This case was filed in 2017 and issued in 2020.

The examiner issued a rejection under §101 citing the judicial exception for “natural phenomena.” In response, the applicant amended the claims to clarify the claimed kit did not contain a naturally occurring molecule, but rather an engineered product.

With respect to claim 3 as currently amended, the claim now recites “a first primer, having the same sequence as at least a portion of the first strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor” and “a second primer, specifically paring with the second strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor”. Thus, it would be appreciated by the one skilled in the art that the structures of the first primer and the second primer tightly depend on the oligonucleotide vesicular adaptor which is not a naturally occurring product and is instead is a novel and non-obvious presentation for constructing a nucleic acid library and of which specific nucleotide sequences are artificially selected in accordance with actual needs.

Specifically, the claims recited an oligonucleotide vesicular adaptor that connected to a first primer at one location and a second primer at another location. The first primer and second primer are molecules that can occur in nature. But the applicant argued the claimed kit was not a natural phenomenon for two reasons.

  1. The oligonucleotide vesicular adaptor does not occur naturally. Rather, the inventors developed this molecule.
  2. Although the molecules that make up the first primer and second primer occur in nature, a scientist must select and artificially design the first primer and second primer claimed in the application based on the application of the invention. As a result, the primers were not randomly assembled, as would occur in nature, but deliberately created, as would occur in an engineered molecule.

The examiner found these claim elements established that the claimed molecule could not occur naturally. The examiner withdrew the §101 rejection and allowed the claims.

The lesson drawn from this case is that your claims can include molecules that may occur in nature. But make sure that your claims either include non-natural molecules with them or make clear that the molecules are not the naturally occurring variety.

Kudos to Z. Peter Sawicki from Westman, Champlin & Koehler for exemplary work in drafting winning office action responses!

IP Toolworks Demo

A Combination of Humanized and Natural Molecules Can Save the Day

This argument is a close corollary of the first argument. If the subject matter contains molecules that are arguably naturally occurring, you may be able to argue that the combination cannot occur in nature. This moves you out of the judicial exceptions for “products of nature” and “natural phenomena” and allows you to escape the second prong of the Alice test.

Avoiding Alice’s second prong can substantially improve your chances of allowance. The test’s second prong, which asks whether the invention includes substantially more than the ineligible subject matter, is highly subjective. Therefore, qualifying under the first prong should be your first, strongest, and best thought-out argument.

This argument was used in an application for “Humanized Antibodies” This application was filed in 2016 and issued in 2020. Prior to allowance, the applicant received a rejection under §101 on the ground that the claimed invention comprised products of nature.

The antibody or antigen-binding fragment thereof of the pending claims exhibit “markedly different characteristics” as compared to a naturally occurring counterpart in at least two ways. First, one of ordinary skill in the art would understand that the non-human donor antibody is itself “man-made” … Second, … the antibody, or antigen-binding fragment thereof of claim 1, and those dependent thereon, is eligible subject matter because it exhibits structurally distinct characteristics as compared to a naturally occurring counterpart by comprising both non-human donor and human donor residues, introduced into the claimed antibody by the “hand of man.”

In response, the applicant amended the claims to clarify that the claimed invention included a humanized antibody from a non-human donor. This gave the applicant three strong arguments in the office action response:

  1. The humanized antibody behaved differently from naturally occurring antibodies. It did not behave like the non-human donor antibody because it had been humanized. And it did not behave like a human antibody because of its non-human donor origins.
  2. The humanized antibody was not naturally occurring because artificial processes were needed to humanize a non-human donor antibody.
  3. The final product, a humanized antibody, could not occur in nature because it contained both human and non-human residues.

The examiner allowed the claims. Although the examiner did not identify which of the arguments ultimately persuaded the examiner to allow the claims, all three of the arguments are powerful.

The lesson to be drawn from this case is that your chances for allowance improve if you can claim and argue for the non-natural creation, structure, and behavior of the claimed molecule.

Kudos to Elizabeth M. Rohlfs from Pfizer Inc for exemplary work in drafting winning office action responses!

A Real-World Application Can Carry You Through

Although you would prefer to satisfy the Alice test’s first prong rather than battling over the more subjective second prong, you should not limit your arguments to the first prong. If an examiner disagrees with your arguments under the first prong, you will need to present something under the second prong to try to satisfy the Alice test.

This occurred in an application for “Predicting the Ability of Atlantic Salmon to Utilize Dietary Pigment Based on the Determination of Polymorphisms” This application was filed in 2016 and allowed in 2020, although it has not yet issued as a patent because the applicant has not paid the issue fee.

The application claimed a process for sequencing the genes of an Atlantic salmon to detect cytosine at a particular location in the gene sequence. The examiner rejected these claims as directed to a natural phenomenon.

[A]lthough nature-based product limitations are recited by claim 15, analysis of the claim as a whole indicates that claim 15 is focused on a process of detecting the presence of a specific nucleic acid sequence in a sample from a salmon, and is not focused on the nature-based product per se. Id. at 11. For example, as amended herein, claim 15 recites, in part:

a) obtaining a nucleic acid sample from a salmon; and

b) assaying the nucleic acid sample to detect a presence of one or more alleles in the nucleic acid sample;

c) detecting the presence of a cytosine at position 36 in SEQ ID NO: 14.

In response the applicant amended the claims and presented two arguments:

  1. Under the first prong of the Alice test, the applicant argued that the claims were not directed to a natural phenomenon. Specifically, the applicant pointed out that the process of obtaining a DNA sample from the fish, sequencing it, and looking for a particular gene was an artificial process even though it worked on a naturally occurring molecule. As stated by the applicant, the claims were focused on the process of detecting the naturally occurring product and not the naturally occurring product per se.
  2. Under the second prong of the Alice test, the applicant argued that the claims were not merely directed to detecting the naturally occurring product. Instead, the results of the process were used to guide the selective breeding of the fish tested so that the desired characteristic was passed to the offspring. Thus, the claims recited “substantially more” than the process of detecting the naturally occurring product. Specifically, the test results had a real-world use in improving fish husbandry.

The examiner allowed the claims. But the examiner did not identify which of these arguments was found persuasive.

The takeaway from this case is that you should always present arguments on both prongs of the Alice test. In this case, while each argument was powerful independently. the applicant took measures to avoid prolonged prosecution, by presenting both sets of arguments in the office action response.

Kudos to Bradley W. Thomas from Shook, Hardy & Bacon LLP for exemplary work in drafting winning office action responses!

Overcoming §101 Rejections in Molecular Biology Cases

Although some patent practitioners might view Chakrabarty as dated, the “made by man” phrase remains one of the most powerful arguments you have to secure allowance of artificially-created biological inventions.

But you should not limit yourself to “hand of man” arguments. The chances for allowance increase as you present more ways that the claimed molecule differs from its natural counterparts. Look for specific differences in structure and behavior between the claimed molecule and naturally occurring molecules and recite these differences in the claims.

Finally, do not ignore the second prong of the Alice test. Even if you feel optimistic about your arguments that the claims do not embody a natural phenomenon or a product of nature, an examiner might disagree. As a result, you should also present arguments that the claimed invention includes substantially more than a natural phenomenon or product of nature. You can do this by reciting in the claims a real-world application for the invention.

These arguments were found using Arguminer. Visit IP Toolworks to learn more about using Arguminer to find proven arguments for your office action responses.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

5 Tips to Having a Good Patent Examiner Interview

Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground in a 30-minute interview than you can in months of prosecution.

Moreover, during a patent examiner interview, you get immediate feedback from the examiner. Listening to this feedback will help you hone your arguments on the fly. You can throw out arguments that have no traction with examiners while focusing on those that appeal to them.

You can also get a better feel for the examiner’s concerns. The MPEP gives examiners form paragraphs to use in office actions. These often do not illuminate the examiner’s specific problems with the invention or the claim language. Through careful questioning and active listening, you and the examiner can focus on the exact problems at issue in the office action.

Your conversation with the examiner might also yield information you might not otherwise obtain. For example, you might discover that the examiner misunderstood your claims or misinterpreted the prior art, which you could then work to clarify. Alternatively , the interview might reveal that the examiner had  a clear understanding of your claims and the prior art, but is unwilling to budge from his or her position no matter what arguments you present. You would go on to address these different outcomes through two very different courses of action. You can determine whether further prosecution before the examiner is worthwhile or appeal is necessary simply by talking to the examiner.

Every patent attorney uses a different strategy for conducting examiner interviews. Here is a countdown of five tips to consider as you develop your interview strategy.

Tip #5: Figure Out What You’re Going to Say

When you draft an office action response, you spend time sharpening your amendments and arguments. You should take the same approach when you prepare for a patent examiner interview.

Examiners will usually only grant one interview, so you should not waste your opportunity. More importantly, under the MPEP, interviews for “sounding out” the examiner are prohibited. When you and your client discuss the possibility of interviewing the case, you should have specific issues you want to discuss with the examiner and a clear goal.

You may have heard or read anecdotes about patent lawyers who get good outcomes while improvising during interviews. This strategy is probably not the best use of your time, the examiner’s time, and your client’s resources. Instead, have a game plan for what you will say and how you will say it.

Tip #4: Get the Right People in the Interview

There is nothing more frustrating than preparing your amendments, arguing your case to the patent examiner during an interview and reaching an agreement with the patent examiner about the amendments, only to have the examiner pull the rug from under you with another office action. Or, worse yet, to come out of an interview agreeing with the examiner, only to have your client overrule it.

Such misunderstandings happen because the interview lacked the people critical to the decision-making process.

On the patent office side, the necessity of on-the-job training for new examiners results in layers of checks. At a minimum, you should politely inquire if a primary examiner should attend the interview when you schedule it. Just beware that some examiners might take offense, so approach delicately.

On your side, you must make a prudent and deliberate decision whether to include the inventor and a representative for your client (if the inventor is not your client). Some advantages of having the inventor and client include:

  • Someone on your side can immediately approve the examiner’s amendments
  • Your client hears what happened rather than receiving a summary from you
  • The inventor can explain the invention and the prior art
  • Your client feels involved

Conversely, having your client in the interview poses some risks, including:

  • Your client can inadvertently make admissions adverse to your case
  • The inventor might take the examiner’s rejections personally, and tensions may rise
  • The client might waste your interview time talking about irrelevant issues

Having the right people in the interview on both sides can facilitate an agreement, but only if they can work collaboratively and not start a confrontation. Remember that a patent examiner interview is not an adversarial process. If the inventor and client attend, make sure they understand that persuasion, not confrontation, during the interview will likely be the easiest path to allowance.

Tip #3: Make an Agenda

The interview request form and patent examiner interview best practices suggest that you identify the issues you want to discuss during the interview. You should consider going beyond this by creating an agenda to will lay out each topic you wish to discuss with the examiner.

Many examiners ask for an agenda when you schedule the interview. You could share your complete agenda with the examiner, or keep your detailed agenda for yourself and instead provide an outline.

In either case, providing the patent examiner with an agenda will help you in a few ways:

  • The examiner has a roadmap, so you can move from issue to issue efficiently
  • You make sure you cover all the points you want to raise without leaving anything out
  • The examiner has a preview of your interview topics, allowing them to  prepare to respond to, or even concede specific points, so that the interview proceeds more smoothly

When you create your agenda, you should also consider including proposed amendments, as this will give the examiner something concrete to consider. Rather than talking in abstractions about the claims, you can point to specific proposed language for discussion. Providing the examiner with your proposed revisions further demonstrates your willingness to work with him or her to reach allowance, and invites the examiner to propose language as well.

The last two points on your agenda can then consist of:

  1. A discussion about whether the proposed amendments will result in an allowance of the case. This is also an opportunity to record proposed amendments that could lead to allowance.
  2. A discussion of whether there are any additional issues, arguments, or amendments to be addressed 

Remember, examiners work with hundreds of cases and thousands of claims every year. Diligent examiners often have suggestions that not only help you secure allowance, but improve your patent application.

You should approach the interview as a two-way communication rather than simply your opportunity to present your case to the examiner. In at least some cases, the examiner will help you on your path to allowance. Most importantly, when an examiner makes a suggestion, and you incorporate it into the claims, the examiner is much more likely to agree that your amendment moves the case forward.

Tip #2: Begin Conceptually

At the beginning of your patent examiner interview, try to identify the broad issues in the office action. One way to do this is to have a conceptual discussion about the prior art and the invention.

Summarize your understanding of the prior art and see if the examiner’s understanding matches. If the examiner has a different interpretation of the prior art, you may be able to address at least some grounds for rejection by persuading the examiner of your interpretation.

Keep in mind that because examiners have an enormous workload, they may not always have your client’s invention clear in their heads when you start an interview. Discussing the concept behind the invention can help get the examiner in the right mindset for the rest of the interview.

Tip #1: Close Concretely

Have a goal in mind before you start the interview. Try to close in a way that makes clear whether you reached your goal. Remember, closing concretely does not necessarily mean that you always win. Rather, it means that when you close, you know whether you reached an agreement and, which direction you and your client should go, if you have not.

For example, imagine  you have a prior art rejection under §102 that you believe your proposed amendments should successfully overcome. Several outcomes are in fact possible at the end of the interview:

  • The examiner agrees that your amendments overcome the rejection.
  • The examiner agrees the invention is distinguishable but disagrees that your amended claims distinguish over the reference.
  • The examiner agrees your amendments overcome a §102 rejection but switches to a §103 rejection.
  • The examiner believes the invention is not novel given the prior art. No claim amendments can overcome the rejection.

Each of these outcomes is acceptable. You know where you stand with the examiner, and you can advise your client about what to do next.

What you want to avoid is ending the interview without a clear understanding of where the case stands. It may take some cajoling to pin the examiner down, but try to reach a concrete conclusion.

A “Good” Patent Examiner Interview

A good interview moves your case forward. That movement could be an agreement or just a better understanding of where your case stands. You can use interviews to benefit your clients and keep their cases progressing by:

  • having a plan 
  • getting the right people in the interview 
  • following an agenda
  • opening conceptually
  • closing concretely 

Keep leveling up your patent prosecution practice! Take a look at 3 Obvious Mistakes to Avoid when Responding to Office Actions!

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

How To Effectively Analyze Office Actions

“For the things we have to learn before we can do them, we learn by doing them.” – Aristotle

After stepping out of law school, passing your patent bar exam, and landing your first job as a patent attorney, the practicalities of the patent prosecution world can be overwhelming. The knowledge you gained during those years of rigorous study might suddenly seem inadequate as you discover just how much of the day-to-day work you are expected to perform relies on practical training

Preparing office action responses is likely one of the major responsibilities you will take on as a new patent prosecutor. This work involves tremendous attention to detail, as well as  time pressure, as responses must individually address each of the often lengthy rejections and objections raised by the examiner. Moreover, you must do so on a timeline dictated both by client schedules and strict USPTO deadlines. Having a systematic approach to analyzing the office action can keep you at the top of your game, making it quicker and easier to assemble responses, and laying the groundwork for more efficient prosecutions down the road. Read on for a technique that will help you do just that:

Efficiently Analyzing Office Actions:

If you are just starting out as a patent professional, going through numerous pages of what the examiner finds wrong with the application you drafted can be discouraging. Don’t get bogged down! Let me tell you about the method that I have developed to analyze office actions efficiently. This method works well for three reasons. It is:

  • Thorough

It helps find the best arguments and responses and puts you in a better situation.

  • Structured  

It’s repeatable, so it helps build your confidence and efficiency. It provides a framework within which you can make variations. You can optimize and modify your responses based on a particular situation.

  • Well Documented  

Documentation is underrated. If you write down your thought process, coming back to it is extremely helpful. It helps with future office actions.

Step By Step Analysis Of Office Actions:

By following a few simple steps to analyze the office actions effectively, you will be able to draft well-articulated arguments and responses.

#1. Getting An Overview:

When you receive an office action, start by getting its overview and create a basic structure. Briefly scroll through the document to see what kind of rejections you are dealing with. Check to see if there is any allowable subject matter. Make notes for the overview of the rejections as you go along. Spell the words correctly and format the document properly for better readability. For example:

When you do this exercise, you get your subconscious working. You get a big picture while going through the process, which will help you while drilling into the rejections and drafting responses.

#2. Use Headings & Subheadings:

Create the headings for your document with the help of the questions you’ll need answers for. For example, ‘What do we have here?’. Also, use subheadings like ‘101 rejections’ and jot down the reasons under it. For example:

These headings and subheadings help to give you clarity. You’ll be asking the same questions in subsequent office actions as you’ll be asking during this first analysis. Thus, it will be much easier to deal with the rejections for future office actions.

#3. Document the Reasons in Detail:

Once you’ve gotten your overarching view, start to drill into the office action. Start documenting the reasons recorded by the examiner in detail. At this point, assume that the examiner is right. Make note of what he says. Document the justifications which are given by the examiner. We are not going to check the rationale at this point. For example, if the examiner cites the MPEP 2106.05(f), we are not going to verify the citation at this step for the following reasons:

  • Verifying the reasons at the end gives you thoroughness. You will be able to figure out if the examiner missed a step.
  • It primes your mind. You will be thinking of your way forward for your responses.

The strategy that I apply to document the reasons for 101 rejections is different from that for 103 rejections.

For 101 Rejections:

Create a framework for your 101 rejections. Cite the reason for rejection as given by the examiner for each claim. For example:

For 103 Rejections:

Get into the claim language itself and not into an analytic framework. First, copy the claims from your application to the document. Notice how the claims are mapped to the prior art. Do it systematically. Add comments to each claim citing the limitation mapped to it from the office action. Also, look at the dependent claims and how they are mapped to limitations. For example:

When you go through limitation by limitation, you will start finding gaps and automatically know where to focus.

IP Toolworks Demo

#4. Analyze the Reasons:

Now start scrutinizing the reasons given by the examiner. Check the prior art references as well as the legal references to see if what the examiner is saying is really true or not. Verify the legal reasoning given by the examiner from the case laws, rules, law, etc. cited in the office action. For example, if the examiner cites MPEP 2106.05(f), it is at this point that you open MPEP 2106.05(f) to check whether the examiner has made a true statement or misrepresented.

Look at what each paragraph actually says in the application and not just what the examiner says to verify. You will also be able to figure out which of the reasons given by the examiner are worth arguing about. Documentation is critical. Being thorough and systematic is important.

#5. How to Respond to Office Actions

This method is designed to help you analyze the office action and to make it easier for you to respond to the office rejections. The final step is to figure out your arguments and responses. When you go through the above process thoroughly, you will have laid a foundation. You will get an idea about where the examiner is wrong. Also, you’ll know how to make corrections in the claims where the examiner is right.

Ask yourself:

  •  Is there any way to amend the claims to foreclose the examiner’s interpretation?
  •  Is the examiner’s interpretation reasonable? 

If the answer is yes to these two questions, think about how you can propose the amendment to get the examiner to withdraw the rejection. The above approach will give you an idea about whether you need to make any amendments. If so, what to amend as well. Also, check the language you want to use while making your arguments. You don’t want to sound aggressive.

While working on your response to the office action, also check what’s worked previously on similar rejections. Once you start getting into the habit of analyzing the office actions by structurally documenting them, you will create a database for future office actions, whether they be subsequent rejections on the same application, or other applications you are working on.


One of my favorite things about this method is that it saves me from wasting time repeating work that has already been done. Another way to increase your skill and efficiency in handling office actions can be to let the work other attorneys have done preparing their responses work for you. At IP Toolworks, we created the Arguminer software to allow you to easily search publicly available file wrappers to find responses prepared by other attorneys that are a match for your examiner, rejection type, or other criteria unique to the office action you are responding to. You can pull up form arguments to use in your response and discover which arguments have been successful in the past to help you respond more strategically.

IP Toolworks Demo


I hope you found this approach to analyzing office actions helpful to your response preparation, as it has been for me. Wishing you great success in your practice. Good luck and good patents!

Read next: 3 Obvious Mistakes to Avoid when Responding to Office Actions

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion. The examples provided were prepared using sample office actions from PAIR for demonstration purposes, and do not contain client data.”

3 Obvious Mistakes to Avoid when Responding to Office Actions

It’s natural to trust the examiner and approach things like a lawyer while prosecuting patent applications. However, it may not always be the right course of action to get the patent granted.  

Greetings, my name is William Morriss. I am a patent attorney. I have been practicing for over 15 years now. Today, I will walk you through three mistakes to avoid when responding to office actions. The first two are mistakes that I’ve seen people make while training them on drafting responses. The last one is one that I made when I was first learning. Fortunately,  my mentor taught me how to avoid that mistake for the future.

3. Trusting the Patent Examiner

2.  Focussing on just the independent claims

  1. Approaching things too much like a lawyer

So, let’s begin with mistake number 3.

3. Trusting the Patent Examiner

I am not saying don’t cooperate or collaborate with your patent examiner. You really should, because, ultimately, you both need to reach an agreement. If you go in with a mindset of conflict:

  • I’m going to beat this person, 
  • I’m going to destroy this person, 
  • this person is an idiot, and 
  • they have nothing to say; 

it’s going to be hard to get to an agreement with them. So it’s not about you being aggressive or being confrontational with the examiner. 

It’s more about recognizing that you and the examiner are different people

When you prepare the patent application, it has claims that you thought were reasonable and should be supported. However, the examiner is a different person reading with different eyes. The examiner spends much less time reviewing the patent application than you did writing it. They have less understanding of the invention, and they may very well get things wrong.

I remember an example where an associate that I was training nearly got into trouble by trusting the examiner. In this case, the examiner said, “Oh, you know, this term in your claims, I’m going to interpret it this way.” The result of that interpretation was that the invention became treated as non-patentable subject matter, which the examiner rejected under S.101. 

As it happened, I had written this case and knew about this issue. I had included an explicit definition of the term the examiner was interpreting that made it very clear the invention was not subject matter ineligible. The examiner had overlooked it. The associate  took the examiner’s reading at face value and concluded that we needed to amend the claims. This is a very common mistake, as it is quite natural to attach a certain authority to the interpretation made by the examiner. But in fact, it turned out that we managed to overcome the rejection without needing to make an amendment.

In general, it is good if you can respond to rejection without amending your claims, that means:

  • You are not giving up on the scope, and
  • You are not potentially causing a change on the grounds of rejection

It is essential to know that the examiner may be wrong. When you wrote the claim, you did not write it thinking it’s not eligible or supported. You wrote claims that you thought were eligible, supported, and innovative

2. Focusing Only on the Independent Claims

Another common mistake that I’ve seen in practice is focusing just on the independent claims and not looking at dependent claims.

Focusing on independent claims seems rational because, to get a patent, you have to reach an agreement on at least one of them. The independent claims are probably the broadest and most commercially viable. However, dependent claims have a purpose too. Dependent claims are built-in fallbacks. There is a reason you wrote them and put them in there. 

When claims get rejected, you must try to get the rejection withdrawn. You can probably do this by inserting the dependent claim’s limitations into the independent claim. Then, the examiner would either have to allow it or give you another non-final action. This is good because you don’t have to request for continued examination (RCE), which will delay things and cost your client money.

You won’t get this result if you focus only on the independent claims and try to make minor changes and clarification while still going for basically the same things as you had before. The problem is that when you make that change, you might not get anything at all, or, based on your change, a new ground of rejection may come up that can be made final. You will then need to:

  • Do a new RCE
  • Pay money
  • Lose patent term
  • Get delayed

Sometimes that is the right thing to do. However, it’s better to avoid it if you can. Working with the dependent claims is a good way to avoid that happening.

1. Approaching Things too Much like a Lawyer

This is a mistake I made when I was being trained. Fortunately, my mentor caught the error and removed it, so it did not go out in the office action response. I was freshly out of law school, at the time, where they teach you all these cases; you learn about claim construction, prosecution history, disclaimers, pleadings and pleadings in the alternatives. These may all make sense in litigation but may not really work in patent prosecution. 

For example, you might have a rejection where the prior art says it has features A, B, and C. The examiner states that a paragraph touches element X with features A, B, and C. You might be confused about which of the features the examiners are relying on. 

In response to the rejection, you could write a very logical, intricate, precise, and sophisticated argument about how the examiner is wrong regarding the features. But it does not help you in any way

First of all, it would be very confusing and won’t help you move forward with your case. Secondly, you have to write a lot. Some of this writing would be unnecessary and irrelevant, and worse, could potentially be used against you in prosecution. 

Another example is arguing about the inconsistencies in the patent examiner’s interpretation of the claims based on your training about claim construction from law school. This will not help your case either, as under the broadest reasonable interpretation rule (BRI), examiners have a great deal of discretion and leeway while interpreting claims. 

The better approach

Treat prosecution differently. Rather than responding with a lawyer’s mindset you can:

  • amend claims
  • have an interview with the examiner to understand the differences in interpretation

By the end of the conversation, you won’t have to go through the rabbit hole of A, B, and C and alternatives, or interpretations and claim constructions. You would have figured it out together with the examiner without the arduous process of lengthy writing.

At the conclusion of the interview you might find that you have to make a change, or maybe you will have clarified things so that a change is unnecessary. It is also possible that you might not ultimately agree with the examiner, but the interview would have at least given you the opportunity to know what is happening. In this case it will have helped you figure out that you need to make an appeal.

So what do I do to avoid these mistakes in my practice today?

Ways To Avoid Mistakes

  1. Interviews:

This is an excellent tool to make sure things are on track. If there is time for it and you can get it, interviews are almost always good to have.

  1. Talk to senior colleagues: 

I am fortunate to work with colleagues who have been in practice for a long time; since I was in high school, in some cases. If I have questions or I’m uncertain about how to go about things, I can talk to them. This gives me the benefit of experience that extends a decade or more beyond my own.

  1. Make use of past cases: 

There is a wealth of information that you can get from file wrappers and past cases, especially for issued patents, which are a matter of public record.

At IP Toolworks, we have designed the Arguminer software to help you mine arguments other attorneys have used to avoid pitfalls in their own prosecution practices. This can be helpful if you have a 101 rejection, for example, as this is a very dynamic aspect of law. Even the experience of more senior colleagues might not help as much because the law keeps changing.

With the software you can apply a date filter to ensure your result conforms with the current gold standard for what examiners look out for, and insert other search criteria to find examples that match your specific examiner or arguments you are considering. The Arguminer software can also be used to see examples that did not work for a particular case. Seeing battle-tested arguments and their outcomes can help you both avoid repeating mistakes that other people made and capitalize on their success.

IP Toolworks Demo

Let’s Sum it Up

The three mistakes that people make when responding to office actions are: 

  • Approaching things too much like a lawyer rather than engaging in in-depth communication with their patent examiner to reach a mutual understanding;
  • Focusing exclusively on independent claims, rather than focusing on the independent claims along with the dependent claims; and,
  • Trusting the decisions of the patent examiner without making a personal analysis of the decision.

To avoid these mistakes in your office action responses, it can be helpful to make use of past cases, interview the patent examiner, if you can, and leverage the experience of senior colleagues.

You may like to read – “3 Inspiring Office Action Responses from Techs where 101 Rejections are Rare

Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

3 Anti Alice Responses to Overcome 101 Rejections in Printing and Measuring Domain

In some technology classes, subject matter eligibility rejections are par for the course, but in others, they can come as more of a surprise. Take, for example, the field of printing/measuring and testing. Whereas attorneys drafting applications in fields such as these may expect to spend the majority of their prosecution time fine-tuning technology-specific claims around prior art rejections, the continued prevalence of Alice and the increasing use of computer-implemented components across mechanical fields means that the ability to craft a convincing argument on subject matter eligibility can be critical here as well. We took a look at three examples of winning responses to office action examples from Art Unit 2862 to find out how their arguments were able to stand up to the test.

Additional Steps and Elements: Prong Two  of the Alice Test

As is well known, Alice, the Supreme Court set forth a two-pronged test for patent-eligibility. First, a determination is made as to whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (collectively, called the “judicial exceptions”). If the answer is yes, then the second step is to further determine whether any element or combination of elements, in the claim is sufficient to ensure that the claim amounts to something significantly more than a judicial exception. 

Whereas the Alice test would seem to present an either/or situation, it is nearly always to the prosecutor’s benefit to cover all bases by presenting arguments on both prongs and leave it to the examiner to determine which they find convincing.

An example of arguments directed to the Alice test in the printing/measuring and the testing domain is in an Office Action response dated October 28, 2019, from application 15/448,587 for an “Apparatus and Method of Processing Multi-Component Induction Data.” 

First, the applicant argued that claim 1 was not an abstract idea. Specifically, it was argued that the claim recited, “acquiring signals based on the multicomponent tool having a plurality of receiver arrays,” which is not abstract. Furthermore, claim 1 was not directed to a mathematical concept and did not recite any mathematical relationships, formulas, or calculations. Therefore, the applicant argued, the contention that claim 1 was directed to an abstract idea of mathematical concepts was an overgeneralization and ignored the clear claim language and presence of non-abstract ideas. 

Second, the applicant argued that even if claim 1 had failed under step one of Alice, the claim would meet step two. In the applicant’s case, the recited exception was integrated into a practical application of the exception. The claim recited the additional element of generating data with “improved resolution at multiple depths of investigation compared to the acquired signals” and practically applied the alleged abstract idea to improving the acquired signal of the multi-component induction logging tool. Accordingly, the applicant argued, the claimed combination was an inventive concept for generating improved data with an improved resolution at multiple depths of investigation compared to the acquired signals, and therefore claim 1 recited significantly more than the alleged abstract idea.

Examiner Brent Alan Fairbanks’s response to these arguments focused on those relating to the second step of Alice. In an office action dated December 4, 2019, the Examiner withdrew the Alice rejection, stating:

The additional element of a receiver triad, the additional step of “correlates the electromagnetic properties of the downhole formation”, and the additional step of “the data has an improved resolution at multiple depths of investigation compared to the acquired signals” integrates the abstract idea into a practical application that reflects an improvement to another technology or technical field. Therefore, the claim is eligible at Prong Two of the revised step 2A (see 2019 Revised Patent Subject Matter Eligibility Guidance – Revised Step 2A). The rejection of 29 July 2019 has been withdrawn.

A notice of allowance was sent on March 6, 2020, and the resulting patent issued as U.S. Patent No. 10,670,767 on June 2, 2020.

Kudos to Neilesh R. Patel from Gilliam IP PLLC for exemplary work in drafting winning office action responses!

Software-Related Claims are not Automatically Judicial Exceptions Under Enfish 

Before Enfish, courts had generally found that software-related inventions, requiring the computer, represented abstract ideas. Because of this, when the Alice test was applied to any software-related claims, the analysis generally assumed that step one was met and moved on to step two. However, in Enfish, the court found that the software claims at issue were not directed to an abstract idea.  Accordingly, the patent-eligibility analysis did not need to proceed beyond step one. 

A case involving a printing/measuring and testing invention in which Enfish was successfully argued against an Alice rejection is in an office action response dated June 3, 2019, from application 15/649,571 for a “Methods for Improved Heading Estimation.” 

The applicant quoted Enfish to assert that step one of Alice asks whether the focus of the claims is on the specific asserted improvement in computer capabilities or is an abstract idea invoking computers merely as tools:

“[T]he first step in the Alice inquiry … asks whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). 

Applicant went on to argue that in their case, the claims could not be simplified into mere mental steps. The claims provided a practical application for determining a global rotation estimate, applying spatial magnetic filtering, and generating accurate path data based on magnetic and gyro sensor data collected at a computing device. When considered as a whole, the applicant argued that the claims recited significantly more than mental processes or instructions performed on generic computer components that are well-understood, routine, and conventional. 

In a notice of allowance dated June 12, 2019, examiner John H. Le explained how the applicant had overcome the Alice rejection:

Claims 15-30 are allowable over the rejection under 35 U.S.C. 101 because the claim does not recite any [sic] the judicial exceptions enumerated in the 2019 PEG. For instance, the claim does not recite any mathematical relationships, formulas, or calculations. Further, the claim does not recite a mental process because the steps are not practically performed in the human mind. Finally, the claim does not recite any method of organizing human activity such as fundamental economic concepts or managing interactions between people. Thus, the claim is eligible because it does not recite a judicial exception.

The resulting patent was issued as U.S. Patent No. 10,393,543 on August 27, 2019.

Kudos to Timothy D. Casey from Baker & Hostetler LLP for exemplary work in drafting winning office action responses!

No Monopolization of an Abstract Idea

An example focusing on step two of Alice did not emphasize whether the claims included a judicial exception but instead focused on whether the claims attempted to monopolize the judicial exception for all uses. 

In application 15/438,259 for “Expected Sensor Measurement Receipt Interval Estimation,” the applicant presented arguments in response to an Alice rejection in an office action response dated March 23, 2020. The applicant contended that, when making the determination of whether a claim is directed to an abstract idea, the examiners should keep in mind that some inventions pertaining to improvements in other technologies are not abstract when appropriately claimed. The applicant argued that the claims at issue provided a particular improvement to the technology of sensor systems by automatically performing the remedial action of restarting or rebooting the system. 

In a notice of allowance dated July 10, 2020, examiner Leonard S Liang referenced the fact that the claims were not monopolizing an abstract idea as dispositive:

However, when considering the claims as a whole, the examiner determined that there was enough in the additional elements to be indicative of integration into a practical application. Here the claim is not monopolizing the abstract math for all purposes, just those relating to rebooting/restarting the sensor system. And the sensor system can still be rebooted/restarted even if another mathematical technique is used. Therefore, the claims are not directed to a judicial exception. They qualify as eligible subject matter under 35 U.S.C. 101.

Although the case was allowed, it was abandoned before issuing as a patent for failure to pay the issue fee.

Kudos to John C. Garza from Trop, Pruner & HU, P.C. for exemplary work in drafting winning office action responses!


In technology areas where such rejections are rare, patent practitioners are less likely to be experienced with crafting office action responses to Alice, making the task more daunting. Nonetheless, as the cases above demonstrate, it is indeed possible to overcome an Alice rejection in technology domains where Alice is rarely encountered. You just need to know-how.

The cases for this article were found using Arguminer – patent prosecution software from IP Toolworks. The Arguminer software automatically sifts through millions of office action responses, finding examples that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users.

We shared a similar post with proven arguments for the ‘Gaming’ domain. How about sharing that with your colleague who deals with patent prosecution in gaming?

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you find proven arguments to use in your next Office Action. Arguminer not only helps you level up your prosecution practice but can assist in training new attorneys working with you.

Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”