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November 03, 2015


"The Section further took issue with the Office's statement about official notice. Namely, in the July Update, the Office stated that '[c]ourts have not identified a situation in which evidence was required to support a finding that the additional [claim] elements were well-understood, routine or conventional, but rather treat the issue as a matter appropriate for judicial notice.'"


Sigh. That nonsensical statement by the USPTO about how it can take Official Notice in patent-eligibility determination shows just how bad and out of control the situation has gotten with respect to the broken Alice test. Also, the USPTO's view that Official Notice may be taken without any evidence of such is not a new one, but how the USPTO can say, with a straight face, that its view of Official Notice complies with the provisions of the APA completely escapes me.

My question about the Office's use of official notice (for 101, 102, or 103) is this - if something is so well-understood why can't the examiner take 5 minutes to come up with a reference?

In my experience, some examiners use official notice to "fill the gap" in an obviousness rejection where they cannot find a reference that discloses a particular claim element, so they just conclude that the element is well known. The same thing is now happening with eligibility rejections.

Hi Mike --

I think your criticism of the 3-separate-tests part of the ABA letter reflects a little bit of hasty writing (for which I will take blame), and a little hasty reading (on yours).

All three tests fit under the Alice two-part "framework." However, the three tests are distinct in this sense --

If step one identifies a "law of nature" or "natural phenomenon," then step two must proceed on "law of nature" grounds, not machine-or-transformation or Alice grounds.

If step one identifies an "abstract idea" in the machine-or-transformation mental steps sense, then step two must proceed on machine-or-transformation grounds, not law of nature grounds or Alice "wholly obvious, conventional" grounds.

If step one identifies an "abstract idea" in the Alice "long prevalent," "fundamental, or building block" sense, then step two must proceed on Alice "wholly obvious, conventional" grounds, not "law of nature" or "mental steps" grounds.

One framework, two steps, three distinct paths through those steps.

Does that clarify?

David Boundy

And to further clarify, I recognize that the 2014 rerun of Ultramercial mixes up the three tests -- step one uses machine-or-transformation reasoning, step two uses Alice reasoning.

But Alice is really clear that machine-or-transformation reasoning is "beside the point" when applying the Alice test.

So I (and a consensus of ABA IP section) think that Ultramercial 2014 is wrongly decided, even within the Mayo/Alice framework of gibberish.


Thanks for the note. I will agree that the Mayo/Alice is not a good way of determining patent eligibility, and that Ultramercial went the wrong way.

But the only test we have is the Alice test. And as I mentioned in the post, it is not just a "long-prevalent" test.

In any case, I do not see how viewing patent eligibility as three distinct tests adds any clarity to the process.


To me, this all smacks of substantive law WRITING, in an area of statutory law.

Should even the Court (or courts) - much less the ABA be "writing" this type of law?

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