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« Court Report | Main | FCBA Friedman Memorial Lecture on Excellence in Appellate Advocacy »

November 05, 2015


"Unless the examiner provides a detailed rationale for rejecting claims under § 101, the applicant is left with little with which to work."


This problem of providing a "rationale" is not limited the examiners. In the recent Bak and Base decisions, the PTAB instituted new rejections for patent-ineligibility without even providing a scintilla of "rationale," and more importantly, any factual explanation to support those new rejections based on the broken Alice test, leaving the appellants to guess as to how to respond. (Yes, the Alice test has proven to be utterly broken and unworkable, even at the PTAB.)

"As examples, BSA states that "a process by which Global Positioning Satellites use data to redirect traffic patterns, a system that automatically reorders a task list of a user based on context, or a new type of board game" are methods of organizing human activity that could be claimed in a fashion that meets the Alice requirements."

Whether something "coud be claimed in a fashion" that meets the Alice standards depends very highly on the details of the alleged innovation.

If BSA can't recognize that much, there's really no point in paying attention to their other "insights."

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