How to Write a Winning Patent Office Action Response | USPTO

Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing skills specific to this aspect of your practice can have a major impact on how efficiently and effectively you are able to manage your practice overall.

Office action responses are where patent prosecutors get to “be lawyers.” Patent applications are very focused on the technology and, aside from the claims, could be written by a technical writer. But office action responses are where you will put your legal skills to work including:

  • Analyzing the legal and technical merits of the examiner’s grounds for rejection
  • Developing a strategy for responding to the rejections
  • Researching cases, regulations, and MPEP sections that support your strategy
  • Writing persuasive arguments that are supported by the law
  • Negotiating with examiners to overcome the rejection

Your prosecution work will lay the foundation for the road you are to face with clients and examiners. Successful prosecution means issued patents. Unsuccessful prosecution will land you, your client, and the examiner in a never-ending cycle of rejections and responses.

Here is a crash course in drafting a winning office action response:

Appearance Matters

Many attorneys find it helpful to begin by reviewing an office action response example which can serve as a template for the office action response being prepared. Doing this will:

  • Help you meet the expectations of examiners and clients about what an office action response should look like.
  • Ensure you do not leave anything out that might trigger a technical office action saying your document was non-responsive.
  • Improve your efficiency.

Developing a template for use now can save time with future office action responses as well. This means you can spend your clients’ time researching and writing effective arguments instead of formatting your document.

Reading is Fundamental

Perhaps you remember the slogan from children’s literacy campaigns that “reading is fundamental.” It is nowhere more true than patent prosecution.

The examiner wrote an office action laying out the reasons for rejection. You must read the office action carefully. If you miss, misread, or misinterpret a ground for rejection, you will needlessly extend prosecution by submitting an incomplete response.

Keep in mind that the easiest office action responses to write are those where the examiner has made a factual error. Examiners make mistakes, and they will occasionally misread your claims or the prior art. If you carefully read the office action and cited references, you can catch these mistakes and correct the examiner with a quick response.

Think Before You Write

You might be tempted to jump right into writing the office action response. But before you start writing, you have a few important decisions to make and some research to conduct.

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Interviewing the Case

Nearly all experienced attorneys we have talked to recommend examiner interviews as among the most important tools at a prosecutor’s disposal. If you’re lucky, you might have a simple rejection, in which case, interviewing might allow you to overcome the rejection by examiner’s amendment without filing a response. More often, you will be dealing with a more complex rejection, in which case, interviewing can help you narrow down or eliminate some issues. Even if you are not able to get the examiner to agree on allowance during the interview, this will help you submit a more focused response.

Many aspects of how you approach the interview are a matter of personal style and preference, that you will refine over the course of practice. However, to get the most out of this important resource, we recommend that you are are: 

  • Early: some examiners are more forthcoming than others when it comes to what they are looking for to succeed. At minimum, conducting the interview early on in the prosecution will ensure that you don’t waste time pursuing a strategy that is far off track
  • Well-prepared: make sure you have planned the discussion thoroughly in advance. You may want to consider preparing an agenda to share with the examiner.
  • Non-confrontational: At minimum make sure you have checked your frustrations at the door, and counseled any inventors who will be attending to do the same. You may even wish to think of the interview as an opportunity to collaborate with the examiner.

We’ve compiled a list of tips to help you master your next examiner interview, which you can read in greater detail here.

Amending the Claims

There are important tradeoffs to be considered when it comes to amending the claims. Amending the claims, particularly in a way that reflects guidance offered by the examiner during an interview,  can demonstrate that you take his or her concerns seriously and that you are willing to compromise to secure allowance.

However, it is best to proceed with some caution, as amending the claims can limit the scope of protection you are able to secure. If you can overcome a rejection without amending the claims, you and your client are almost always better off doing so.

There is no quick and easy way to make this decision. You will make this judgment on a case-by-case basis. However, it can be helpful to look at the examiner’s history to gain insight into what strategies have or have not, been successful in overcoming this rejection in the past. Using a tool like Arguminer, you can research the examiner’s past behavior to help you chart your path forward.

Developing Your Arguments

Many new patent attorneys are unsure about how long an office action response should be. More important than length is how well-thought-out your argument is. A succinct, well-composed argument may well be more successful than a response that is lengthy, but less focused, and may better capture and hold the examiner’s attention.

Remember, examiners have a limited amount of time to devote to each case on their docket. Burdening an examiner with a long, flowery argument will force the examiner to skim your office action response. A punchy argument will keep the examiner’s attention and allow the examiner to identify what you are arguing and how to respond.

At the same time, complex arguments can require more than a few paragraphs to develop. For example, a rejection under §101 will probably need to apply the Alice test and the examination guidelines to the case.

You have many sources for finding and developing arguments. A quote from a case or the MPEP can provide compelling arguments in some cases. However, it is important to remember that because the MPEP is designed for examiners not patent prosecutors, the support you can derive from this source may be limited in scope and is often inefficient to locate.  Colleagues with prior experience with your examiner or issue are an excellent resource and can often provide additional guidance. Finally, tools like Arguminer can help you conduct pin-pointed research to identify which arguments have worked or failed in the past.

Variance in Examiner Behavior

This last point is critical. Examiner variance accounts for much of the outcome in a case. For example, in U.S. Application Serial No. 15/108,712, “Methods, Apparatus, Systems and Mechanisms for Secure Attribute Based Friend Find and Proximity Discovery’” an examiner issued a “mental steps” rejection under §101. In response, the applicant argued:

There is a fundamental difference between the types of claims that the courts have deemed to be ineligible under this exception and the present claims. Specifically, in the cases discussed in MPEP 2106.04(a)(2), subsection Ill.B, the allegedly inventive steps or elements of the claims (i.e., what the claims were directed to) were mental steps that could be performed in the human mind…. However, unlike the cases discussed in MPEP 2106.04(a)(2), … the steps in the pending claims that cannot be performed in the human mind are not ancillary steps to the invention to which the claims are directed. Rather, they are the crux of the invention.

In U.S. Application Serial No.15/610,596, “Method for Predicting Business Income from User Transaction Data,” a different examiner issued the same rejection and the applicant responded with:

the claims recite operations that are advantageously performed by components of a communication network (a processor [e.g., of a server] deployed in the communication network) and cannot be performed as mental steps in a human’s mind. Moreover, the claims include significant features that go well beyond simply “using an index to search for and retrieve data” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” within a particular technological environment, and therefore do not seek to tie up a judicial exception.

These responses are very similar in both quality and substance. But the first argument succeeded and the second failed. By doing a bit of research into an examiner’s history with a particular issue, you can hit the right points in your argument to persuade an examiner to allow your case.

Successful Patent Prosecution is Not a Gamble

For clients, it can sometimes seem as if their success rate with patent applications is dictated by chance. Although many aspects of prosecution cannot be controlled, with proper preparation and execution, patent prosecution can be guided in the direction of your desired outcome. By reading the office action carefully, and planning your response before you begin writing, and researching what has worked in the past using tools like Arguminer from IP Toolworks, you can give your clients the best possible chances at success. 

Here is how you can use Arguminer to draw inspiration for the case at hand:

Step 1 – Drag & Drop or click to upload a copy of your Office Action

Step 2 – Get results from our database of millions of responses showing what worked for other people facing rejections like yours.

Step 3 – Customize searching to pinpoint the best options by filtering for examiner, date, keywords and more.

Step 4 – Take what you’ve found to apply a strategy you know was successful in almost no time at all.

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide

“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.” 

Area of help (Broad)Area of Help (Narrow)USPTO MPEPArguminer
Foundational KnowledgeTeaches legal Rules & ProceduresYesNo
Sample Prosecution ArgumentsYesYes
ApplicationFile Wrapper SearchNoYes
Rejection Specific ArgumentsNoYes
Identifies Successful ResponsesNoYes
StrategyExamples of Examiner BehaviorNoYes

MPEP is Designed for Examiners | Arguminer is Designed for Prosecutors

In general, the MPEP is designed to help examiners examine applications which, in practice, means helping examiners make and maintain rejections. The result of this is that, while the MPEP is broadly accurate, its discussion will often lack nuance and omit information that applicants are likely to find important in responding to rejections. This is not the case with the Arguminer software, since it is designed to help applicants overcome rejections, not to help examiners make them.

For example, if someone had a case where they thought the examiner erred by treating a single prior art structure as covering separate claim elements, they could simply use the Arguminer software to perform a keyword search for “separate elements” to identify a plethora of arguments (with supporting citations) on that precise issue (e.g., running this search quickly, I pulled up the response of 4-28-2017 on application 14/450,321, which provides an extensive list of cases on this issue). Doing the same search in the MPEP would only turn up a single brief mention in the context of functional language as part of a string citation regarding means plus function claims (a type of claim that most applicants try to avoid using in any event).

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Where is MPEP Guidance Lacking?

Because the MPEP is written from the perspective of an examiner rather than an applicant, its guidance is not directed to overcoming rejections. Here are some (but by no means all) areas where the MPEP is lacking:

  • Obviousness
  • Negative Limitations
  • Broadest Reasonable Interpretation


The MPEP downplays the importance of avoiding hindsight, and the rules that are in place to prevent a hindsight reconstruction of the applicant’s invention. Indeed, MPEP 2145(X)(A) specifically provides the following guidance for responding to an applicant who asserts that a conclusion of obviousness is based on impermissible hindsight:

Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).

While it is true that there is no requirement for an express, written motivation to combine references, the patent trial and appeal board has explained that “[t]o preclude hindsight in an obviousness analysis, the Examiner must identify evidence ‘in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.’”  Ex Parte Kageyama, Appeal No. 2020-002742 on application 15/810,275 (PTAB, 2021), quoting Rolls-Royce, PLC v. United Techs Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010).

Similarly, while the MPEP lists various arguments an applicant may make with respect to obviousness (often for the purpose of providing guidance on rejecting those arguments), the listing provided by the MPEP is by no means comprehensive. For example, the MPEP does not mention that when a primary reference teaches a solution to a problem, solving that problem cannot be relied on as the reason for modifying the primary reference using the teachings of a secondary reference, something the PTAB made clear in Ex Parte Allen, Appeal No. 2018-008208 on application 14/712,101 (PTAB, 2020).

Negative limitations 

The MPEP (section 2175.05(i)) correctly notes that “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” However, the only example given in the MPEP of how a disclosure can support a negative limitation is that “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” While it is not inaccurate to say that disclosure of alternative elements can provide support for a negative limitation, someone relying on the MPEP would be unlikely to realize that it is possible to support a negative limitation even without disclosure of alternative elements.  E.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”). 

Broadest Reasonable Interpretation

The MPEP accurately states the rule that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. However, while it does provide some examples of scenarios where interpretive issues may arise (e.g., effect of various transitional phrases, wherein clauses), like the examples of arguments that can be made in response to an obviousness rejection, the information in the MPEP is in no way complete.

For example, one issue which an applicant may want to be aware of is whether it is proper to treat separate limitations in the claim as being physically separate structures. However, the MPEP’s treatment of the broadest reasonable interpretation rule does not include any indication that interpreting separate elements as not requiring separate structures is something examiners have repeatedly been reversed for.  E.g., Ex Parte Moore, Appeal No. 2020-004805 on Application 15/423,780 (PTAB 2021) (“We agree with Appellant. We find that under the broadest reasonable interpretation of the claim, one of ordinary skill in the art would not consider the telescoping rod 34b to be part of the base.”); Ex Parte Denison, Appeal No. 2009-004110 on application 10/158,362 (BPAI, 2010) (“we note that it is not reasonable to rely on the same structure depicted at the interconnection of Berry’s stent segments to meet both of the limitations requiring a ‘double-curved shaped portion’ and a ‘Y-shaped portion.’”).


Using arguments from the MPEP to respond to office actions may be an effective strategy for some rejections. But determining whether the MPEP contains effective arguments for any given grounds  of rejection is highly inefficient. This inefficiency is not accidental. Rather, it comes from the nature of the MPEP. The MPEP was not written from the perspective of a patent prosecutor responding to office actions. As a result, MPEP provides only a few effective arguments and no effective way to find them.

This is not the case with a tool like Arguminer which was specifically developed to assist in identifying effective and, more importantly, successful arguments for responding to office actions. To learn more about the power of Arguminer to help you find and make effective arguments, contact us.

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Protecting Oligonucleotides and Antibodies: 3 Proven Arguments 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!

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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.”

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.

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#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.

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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.

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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 Inspiring Responses to Office Action from Techs where 101 Rejections are Rare

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.

The Examiner’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, the Examiner explained how 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, the examiner 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.”

5 Anti-Alice Arguments from Responses that Worked

5 Anti-Alice Arguments from Responses that Worked

Since the patent office first started applying it in late 2014, the case of Alice v. CLS Bank has been a persistent thorn in the side of patent attorneys, particularly those prosecuting applications in the technology center which deals with business method inventions.1 This has inspired articles addressing anti-Alice arguments, including those that have succeeded in courts and at the PTAB.2

However, as the overwhelming majority of patent applications will neither be litigated nor appealed to the PTAB, it seems that there would be independent value in looking at arguments that have overcome Alice rejections during the one process that all patent application have to go through – i.e., examination. I used IP Toolworks’ Arguminer software to look for office action responses which were followed by withdrawal of responses would be beyond the scope here, I have identified five arguments from them that I feel are particularly worth relaying.

These success cases utilize creative and unexpected strategies, drawing upon “ancient knowledge,” latest cases and unexpected leveraging of the Administrative Procedure Act.

#5 Pre-Alice Training Materials Presented by the Patent Office in 2012 Can Still be Applied to Show Eligibility Post-Alice in 2016 (as seen in prosecution of 14/452,375)

While the patent office has issued numerous memoranda, updates, and similar documents regarding the application of Alice v. CLS,3 the February 17, 2016 response to the rejection of Warehouse Management System application 14/452,375 (the “‘375 Application”) demonstrates that there can be value in applying ancient (i.e., pre Alice) knowledge rather than simply trying to fit the patent office’s latest guidance to the facts of your case. In that case, the claims were initially rejected as directed to an abstract idea, based largely on the post-Alice case of Planet Bingo, LLC v. VKGS LLC.4 However, rather than relying on the patent office’s training material which specifically addressed either Planet Bingo or other post-Alice cases,5 the applicant’s response reached back to the patent office’s August 2012 subject matter eligibility update, explaining that that document was important because:

While the discussion of what amounts to significantly more than a patent-ineligible concept in the document relates to determining whether a claim amounts to significantly more than a law of nature or natural principle, the analysis is reasonably applied to abstract ideas as well since the factors for considering whether an idea is “significantly more” are not tied specifically to laws of nature.6

The applicant then explained how applying the factors laid out in the August 2012 guidance showed that the claims in question were patent eligible, and in the next office action the examiner withdrew the subject matter eligibility rejections of all but one of the pending claims.7 When responding to that last rejection, the applicant shifted from relying on the pre-Alice guidance to a detailed application of Enfish, Bascom and other post-Alice cases.8 However, that shouldn’t undermine the lesson that pre-Alice materials can still be useful, especially since, as shown in the next example …  

  #4 Diamond v. Diehr and other pre-Alice Supreme Court Opinions are Still Good Law and can Establish Eligibility (as seen in 14/137,530)  

When it was originally filed in December of 2013, application 14/137,530 for Semiconductor Manufacturing using Design Verification with Markers (the “‘530 Application”) included 20 claims, all of which were rejected in early 2015 based on Alice.9 At that time, while the patent office had issued relatively less material than by the time of the response discussed above for the ‘375 Application, it had still provided interim eligibility guidance for applying Alice v. CLS,10 as well as examples of the application of that case in the context of the abstract idea exception.11 However, rather than arguing in favor of patentability based on those documents, the applicant reached all the way back to the 1981 decision of Diamond v. Diehr, explaining that, under that case, the method defined by the first independent claim was patent eligible because

[the claimed method] provides that the circuit design that is cleared of design rule violations by the EDA computer system is used in manufacturing a system. Thus, there is more than mere abstract manipulation of numbers by a computer. Instead, the design is used to manufacture a physical device that is free from design rule defects. Such an interaction between a program and a controlled physical process has been ruled to be allowable over a 35 U.S.C. § 101 rejection.12

While, some lingering 103 issues have (as of writing) prevented the ‘530 Application from being allowed, the next action did withdraw the 101 rejections, further illustrating that sometimes the best way to respond to new rejections may be with old cases. Of course, that doesn’t mean that there’s nothing to be gained from being aware of, and applying, new cases. Indeed, the next example makes clear that arguments based on post-Alice cases can also be successful since …  

#3 Bascom v. AT&T Mobility Can Establish Eligibility even if a Claim is Directed to an Abstract Idea (as seen in 13/757,470)  

When the claims to a method and system for obtaining location information from a wireless network in application 13/757,740 (the “‘740 Application”) were rejected for being directed to a judicial exception without significantly more, the applicant didn’t turn to pre Alice guidelines or cases. Instead, in a response filed on November 9, 2016, the applicant focused on much more recent material, including the case of Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,13 which had been decided only that summer. In particular, the applicant relied on Bascom for the proposition that claim which recite a “specific, discrete implementation of” a purportedly abstract idea were not ineligible under section 101, and then identified specific steps recited in the claim as “transform[ing] the purported abstract idea of mobility management into a particular practical application of that purported abstract idea.”14

The next office action showed that this focus on more recent material was effective, stating that “With regards to Applicant argument, for rejection under 35 USC 101, the argument is persuasive and therefore, the rejection is withdrawn.”15

Unfortunately for the applicant, like the ‘530 Application, the ‘740 Application has not (as of writing) been allowed due to some lingering 103 issues, though that should in no way detract from the efficacy of the November 9, 2016 response’s subject matter eligibility arguments, especially since using those arguments allowed the applicant to overcome the subject matter eligibility rejections without any claim amendments. Of course, approaches that differ from those described above in more than just the recency of their supporting citations are also possible. For example, rather than just explaining why a response is substantively wrong…  

#2 You Can use the PTAB Decision ofEx Parte Poisson to Argue that there is no Prima Facie case ofIneligibility (as seen in 13/886,540)  

The Federal Circuit has been generally skeptical of the patent eligibility of systems which apply rules for various purposes.16 Thus, it isn’t a surprise that the claims of application 13/886,540 for Rule-Based Archival Maintenance (the “‘540 Application”) were rejected based on Alice for being directed to an abstract idea without significantly more.17 In responding to these rejections, the applicant began by explaining what was necessary to establish a prima facie case of ineligibility based on the MPEP and the patent office’s subject matter eligibility guidance.18 Then, it analogized the pending rejections to those addressed by the PTAB in Ex Parte Poisson to explain why the requirements for a prima facie case had not been met:

Instead of addressing the specific recitations of the claims, the Office oversimplifies the claimed invention by asserting that the claims are directed to the abstract idea of a series of steps to manage information. In this regard, Applicant draws attention to a recent PTAB decision, in Ex parte Poisson, where the PTAB overturned a finding by the Office that the claims were directed to an abstract idea. Ex part Poisson, No. 2012-011084, (P.T.A.B. Feb. 27, 2015). The Board noted that the Office failed to perform a proper claim construction of the claims and consider the claims as a whole. Id. at 4-5.

This failure, the Board determined, caused the Office to misinterpret the claims and oversimplify the claims in making its determination that the claims were directed to an abstract idea. Id. at 4-5.19 In the next office action, the 101 rejections were withdrawn,20 though some 103 and 112 issues remained which prevented the case from being allowed until December of last year. Of course, you don’t just have to rely on patent-specific jurisprudence when responding to Alice rejections.   

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#1 You can use the Administrative Procedure Act to Combine Subject Matter Eligibility and Art-Based Arguments (as seen in 13/229,755)  

On March 28, 2016, the claims of application 13/229,755 for systems and methods for discovery of related interactable items in a mobile store environment (the “‘755 Application”) were rejected under 35 U.S.C. §§ 101 and 102. 21 While, technically, eligibility under section 101 and patentability under section 102 are separate questions, the applicant on the ‘755 Application leveraged 102 arguments to respond to the 101 rejections with the following application of the administrative procedure act:

whether or not specific claim features are “well-understood, routine and conventional,” and thus amount to significantly more than the judicial exception itself, is a factual analysis that must be based on evidence. The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA), 5 U.S.C. 500 et seq.

as discussed below, Drucker [the reference cited in the rejections under 35 U.S.C. § 102] does not disclose or suggest at least the feature of “wherein the new graphical presentation data includes a visible link between the seed interactable item and the selection indicating that a user navigated from the seed interactable item to the selection,” as recited in exemplary independent claim 1. Because Drucker does not disclose or suggest at least this feature of independent claim 1, this feature is not “well-understood, routine and conventional,” and as such, independent claim 1, and similarly independent claims 10-13, 22, and 28-31, clearly recites “significantly more” than the alleged abstract ideas.22

In the following office action, all rejections under 35 U.S.C. § 101 were withdrawn though, ironically, the rejections under section 102 were maintained23 and have since been appealed to the PTAB.24As the above responses demonstrate, applicants have successfully overcome subject matter eligibility rejections without having to resort to the PTAB or the courts using a wide variety of arguments. While, ultimately, there’s no guarantee that any particular argument will work to overcome a rejection in any particular case, considering past arguments, including those described in this paper, can at least provide inspiration and possible tactics for attorneys who are seeking to establish the subject matter eligibility of their own clients’ inventions.    


 1In particular, the patent office’s open data portal indicates that the allowance rate for class 705 – Financial, Business Practice, Management, or Cost/Price Determination (Data Processing) – dropped from 31.2% pre-Alice, to 23.5% in 2014, to 9.4% in 2015, to 4.7% in 2016. See United States Patent and Trademark Office, Allowance Rate by USPC Class, Open Data Portal (beta) at (visited 5/7/2017). 

2 Daniel A. Parrish and Amir N. Penn, 5 Ways To Overcome An Examiner’s Post-Alice 101 Rejection, LAW360, available at (visited 5/7/2017) (addressing PTAB decisions as a source of authority for responding to Alice in light of the dearth of guidance from the Federal Circuit); 7 Post-Alice Patent Cases That Survived 101 Rejections – Clearing Some Cloud of Doubts on Software Patent Eligibility, GREYB SERVICES, available at (visited 5/7/2017) (reviewing seven court decisions in which patents survived Alice based section 101 challenges). 

3 See United States Patent and Trademark Office, Subject Matter Eligibility, available at (visited 5/7/2017). 

4 Office Action of December 4, 2015 at 2-4, ‘375 Application. 

5 E.g., 2014 Interim Guidance on Patent Subject Matter Eligibility, which specifically addressed Planet Bingo in its section on Abstract Idea Decisions from the Federal Circuit since Alice Corp. 

6 Amendment and Remarks of February 17, 2016 at 8, ‘375 Application. 

7 Office Action of June 6, 2016, ‘375 Application. 

8 Amendment and Remarks of September 6, 2016 at 7-11, ‘375 Application. 

9 Office Action of February 23, 2015, ‘530 Application. 

10 United States Patent and Trademark Office, 2014 Interim Guidance on Patent Subject Matter Eligibility, available at (visited 5/7/2016). 

11United States Patent and Trademark Office, Examples: Abstract Ideas, available at (visited 5/7/2016). 

12 Amendment and Remarks of May 26, 2015 at 5, ‘530 Application. 

13 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). 

14Amendment and Remarks of November 9, 2016, at 14, ‘740 Application. 

15Office Action of December 27, 2016 at 13, ‘740 Application. 

16See SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014) (“Whatever the boundaries of the ‘abstract ideas’ category, the claim at issue involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.”). 

17Office Action of March 10, 2016 at 3-4, ‘540 Application. 

18Amendment and Remarks of May 20, 2016 at 10, ‘540 Application. 

19Amendment and Remarks of May 20, 2016 at 11-12, ‘540 Application. 

20Office Action of September 9, 2016, ‘540 Application. 

21Office Action of March 28, 2016, ‘755 Application. 

22Amendment and Remarks of June 27, 2016 at 22, ‘755 Application. 

23Office Action of September 14, 2016 at 5, ‘755 Application (“Rejection of claims under 35 USC 101 is withdrawn. Rejection of claims under 35 USC 112 and 35 USC 102 are maintained.”). 

24Appeal Brief of January 13, 2017 at 11, ‘755 Application: Claims 1-35 are rejected under 35 U.S.C. § 102(b) for allegedly being anticipated by U.S. Publication No. 2007/0033220 (“Drucker”). The Appellant respectfully traverses this ground of rejection.

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.”

Office Action Responses | How these attorneys beat Alice Rejections in Gaming Technology?

Office Action Responses Where Gaming Inventions Beat the House on Alice

Is there an easy way to find proven office action responses?……. Read on to find out!

While the USPTO has reported that the number of, and variability in, rejections based on Alice v. CLS Bank have decreased following 2019’s eligibility guidance, Alice rejections continue to be among the most challenging to overcome and disproportionately affect certain technologies and categories of filers1. One area of technology which continues to be substantially impacted by Alice rejections is gaming, with some rejections appearing to be based on a categorical rule that any gaming claims are per-se directed to an abstract idea2.  However, while dealing with Alice rejections may seem like a roll of the dice, it isn’t necessarily a rigged game, and having a system can help even the odds.  To that end, patent agents and attorneys working on gaming technologies may want to keep these proven strategies up their sleeves to help strengthen their hands when representing their clients.

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3. Turning Lemons Into Lemonade with In re Guldenaar

On its face, In re Guldenaar3 is not a great case for gaming inventions.  Essentially, Guldenaar appealed a rejection in which the examiner argued that the invention was directed to “rules for playing a game” which  fell within the realm of “methods of organizing human activities.” The Federal Circuit sided with the examiner, referring back to its prior decision in In re Smith4 as establishing that rules for playing a game is an abstract idea, and finding that the claims did not include an inventive concept that could transform them into a patent eligible application. Guldenaar also featured a concurrence by Judge Mayer, in which he took the position that “[w]hile games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge.  They should therefore be deemed categorically ineligible for patent.”5

Despite its apparent negativity toward gaming patents, going below the surface allows Guldenaar to be applied in support of eligibility of gaming inventions.  This was illustrated in an office action response from application 15/785,865 for an “Electronic Gaming Machine and Method.”  In July of 2018, that application had been rejected based on the argument that “managing a game of chance on a plurality of reels” was an abstract idea based on In re Smith6.  However, despite the fact that Guldenaar (like the office action) had relied on Smith, the applicant was able to turn that case in its favor, arguing that:

As to the subject matter recited in claim 1 then, it first should be noted that the Federal Circuit has issued no blanket prohibition against the patent eligibility of gaming machines.  In fact in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), the Federal Circuit specifically stated that their decision was “not to say that all inventions in the gaming arts would be foreclosed from patent protection under §101.” Id. at 819 (emphasis added).  This was confirmed recently in In re Marco Guldenaar Holding, B.V., 2018 US App. LEXIS 36645, *9 (Fed. Cir. 2018). For example, the Federal Circuit suggested in In re Smith, “claims directed to conducting a game using a new or original deck of cards” potentially could survive a challenge under §101 (a point which the Office admitted during oral argument).7

This was then followed by a notice of allowance, with the result that the Electronic Gaming Machine and Method is now U.S. patent 10,366,569.

Kudos to Paul C. Craane from Cook ALext Ltd for exemplary work in drafting winning office action responses!

2. Threading the Needle with 2019 Guidance’s Abstract Idea Categories

In re Smith isn’t the only obstacle that prosecutors working on gaming patent applications may face.  For example, the office action dated 12/14/2018 on application 15/861,431 (Apparatus and Methods for Multimedia Games), acknowledged that the subject invention was not a “fundamental economic practice” under Smith8, yet still rejected it under § 101 based on the conclusion that it was within the category of “certain methods of organizing human activity.”9

However, despite not being able to rely on Guldenaar to reinterpret Smith as described in the preceding section, the applicant was still able to prevail by pointing out that the 2019 guidance defined “certain methods of organizing human activity” in terms of specific subcategories, and none of those subcategories was relevant in that case: Applicant respectfully notes the allegation in the Office Action that the claims “involve arranging portions of multimedia content for presentation to a user to create a multimedia game.”  Even if this allegation were taken to be accurate (which applicant does not concede), applicant respectfully submits that “arranging portions of multimedia content” is not a “human activity” as that term is defined in the 2019 Guidance.  Rather, the 2019 Guidance defines this category in terms of “fundamental economic principles or practices,” “commercial or legal interactions,” or “managing personal behavior or relationships or interactions between people.”  See 2019 Guidance at 52.  Applicant therefore respectfully submits that, under the 2019 Guidance, the pending claims do not recite any of the enumerated “certain methods of organizing human activity.”

Accordingly, because the pending claims do not recite any concept that falls within the enumerated subject matter groupings in the 2019 Guidance, the claims pass Prong One of Step 2A of the revised subject matter eligibility test and are thus patent-eligible.  Applicant therefore respectfully requests withdrawal of the rejections and allowance of the claims.10

Similar category arguments can also be made in office action response to Smith-based rejections.  For example, in office action response to a rejection which stated that all wagering games were similar to In re Smith11, the attorney prosecuting application 15/626,422 (method of gaming, a gaming system and a game controller) argued that:

Claim 43 is directed to displaying a plurality of cloned symbol display potions adjacent to the selected at least one reel at a display device of a gaming machine, the plurality of cloned symbol display positions displaying the plurality of symbols selected for display in the initial outcome for the selected at least one reel, and determining an outcome, based at least in part on, the plurality of symbols in the initial outcome and the plurality of symbols displayed at the cloned symbol positions.  Thus, the limitations of Applicant’s independent claim 43 are unrelated to mathematical concepts, mental processes, and certain methods of organizing human activity.  Moreover, even if an enumerated judicial exception were present (which it is not), the limitations of independent claim 43 convey specific graphical information in a specific way at a display device of a gaming machine.  Thus, the recited display control is a practical application in gaming technology.

Accordingly, Applicant respectfully submits that claim 43 of the present application is directed to statutory subject matter under 35 U.S.C. § 101, and the section 101 rejection is appropriately withdrawn based on the appropriate legal standards, including 2019 PEG.12

Both OA responses were followed by new actions which withdrew the 101 rejections, with the action on 15/861,431 specifically stating that “[t]he examiner is persuaded that the current claims are not directed to an abstract idea in light of the 2019 Revised Patent Subject Matter Eligibility Guidance.”13

Kudos to Jerry Turner Sewell from Patterson Intellectual Property Law, P.C. for exemplary work in drafting winning office action responses!

1. Bringing it Down to Earth with Concrete Limitations and Physical Applications

A third approach to showing that a gaming abstract is to emphasize its concreteness in implementation and physicality of its application.  An example of this can be found in the prosecution of application 15/495,973 for Electronic Fund Transfer for Mobile Gaming.  In January of 2019, that application was rejected under § 101 as being directed to a fundamental economic practice and the sort of organizing of human activities that were identified as ineligible in previous cases.14 In office action response to this rejection, the applicant emphasized both the components recited in the claim and the real world impact of its application:

Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as allegedly being directed to abstract ideas.  Applicants respectfully disagree.  To advance prosecution, claim 1 has been amended to include eligible subject matter such as a location tracker.

The location server and/or tracker, when considered in combination with the vessel and mobile gaming device provide for meaningful limits.  The claims are not simply “a method of exchanging and resolving financial obligations between a player and an operator of the gaming machine” as alleged in the Office Action.  The location server and/or tracker acts in concert with the recited features of the vessel and mobile gaming devices to enable the mobile gaming devices to permit a game of chance to be played on the mobile gaming devices.

Moreover, the enablement of a fund transfer to be approved for a particular requesting mobile device and the enablement of a game to be played by a user or player based upon the determining of a physical location of a game device upon a vessel and the physical determination of a location of a vessel being determined require activity outside of a person’s mind.  Furthermore the determination of an actual physical location of a mobile game device upon a vessel in addition to the determination of an actual physical location of the vessel is not an abstract concept. (See, CG Technology Development, LLC et al., vs. Bwin Party (USA),

Inc., et al. (2:16-cv-0087-RCJ-VCF)).  These features are not long-prevalent and fundamental practices in current business practices, in comparison to the abstract ideas of risk-hedging and intermediated settlement relied upon by the Alice court, which have been in widespread use for many centuries throughout the world.15

This office action response was followed by an office action in which all § 101 rejections had been withdrawn16, and 15/495,973 subsequently issued as patent 10,586,425 on March 10, 2020.

Kudos to C. Douglas Thomas from TI Law Group for exemplary work in drafting winning office action responses!


The above office action responses, and countless others that have worked to overcome § 101 rejections on gaming patent applications, provide both examples and building blocks which can be used to make the right calls in what may look like a longshot situation.   However, while the file wrappers which include those office action responses may theoretically be publicly available, the patent office hasn’t laid its cards on the table – neither PAIR nor the newly released patent center (in beta as of the time of writing) provide functionality that could allow a practitioner to find responses that may be relevant in any particular situation.  

So how can the value inherent in past office action responses be unlocked?  One way would be for a practitioner to look at patents for inventions like the one he or she is working on, look at their file wrappers in PAIR or patent center, and hope to get lucky with something that can be applied to his or her case.  However, we would propose a better way.  The cases for this article were all found using the Arguminer patent prosecution software from IP Toolworks.  The Arguminer software automatically sifts through millions of documents, finding office action responses, appeal briefs and other documents that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users. 

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you discover game changing strategies to use in your next Office Action.


1Andrew A. Toole & Nicholas A. Pairolero, Adjusting to Alice: USPTO patent examination outcomes after Alice Corp. v. C LS Bank International, U.S.P.T.O., Office of the Chief Economist, IP DATA HIGHLIGHTS  3, (Apr., 2020). Available at A. Leml & Samantha Zyontz, Does Alice Target Patent Trolls? (Mar., 2020). Available at SSRN: or

 2E.g., Office Action of July 17, 2019 on application 15/626,422 at 10:

The examiner finds that wagering games are all rather similar: accepting a wager, playing the game according to the rules comprising generating random outcomes according to the rules, determining winning outcomes, determining how much is to be paid for a winning outcome, and paying out the winnings.  This breakdown of wagering claim language is similar to that in precedential case in re Smith (in re Smith (Fed. Cir. 2016), appeal 2015-1664, U.S. patent application 12/912,410) [in which a subject matter eligibility rejection was appealed and affirmed by the PTAB and the Federal Circuit]. 

 3In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).

 4815 F.3d 816 (Fed. Cir. 2016).

5In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (Mayer, J. Concurring).

 6Office Action of July 10, 2018 on application 15/785,865 at 5.

 7Response to office action of July 10, 2018 on application 15/785,865 at 5 (underlining, italics and bold formatting from response).

8Office Action of December 14, 2018 on application 15/861,431 at 10:

The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well-known.”  See, e.g., In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a “fundamental economic practice”).

The present claims do not fall within the category of “fundamental economic practices”.

9Id. at 11:

The present claims involve arranging portions of multimedia content for presentation to a user to create a multimedia game.  This makes the present claims very similar to the claims recited in DietGoal, Ameranth, and Electric Power Group.

The present claims are therefore directed to the certain methods of organizing human activity.

 10Response to Office Action of December 14, 2018 on application 15/861,431 at 17.

 11Office Action of July 17, 2019 on application 15/626,422 at 10.

 12Response to Office Action of July 17, 2019 on application 15/626,422 at 13-14.

 13Office Action of August 28, 2019 on application 15/861,431 at 4.

 14Office Action of January 11, 2019 on application 15/495,973 at 3-4.

 15Response to Office Action of January 11, 2019 on application 15/495,973 at 4-5.

 16Office Action of August 8, 2019 on application 15/495,973

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.”