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« Silly § 102 Tricks | Main | President Biden Signs Executive Order on Biotechnology and Biomanufacturing Innovation »

September 13, 2022


Three comments:

(1) Thank you for pursuing this project. It is informative to see a second project make an independent confirmation of Prof. Crouch's initial conclusions.

(2) I am not quite sure why the 87% affirmance rate provokes such skepticism ("Is this level of examiner affirmance justifiable...?"). The PTO's guidelines bend over backwards to give examiners paths to withdraw a §101 rejection. Therefore, the sorts of rejections that are likely to persist to the point where an applicant will consider an appeal to be the most attractive way forward are going to be disproportionately composed of the most well-founded rejections. "87%" is about what I would have expected, given the almost embarrassing leniency of the current examination guidelines.

(3) I am amused by the advice that one should "[i]f possible, draft[] claims and a specification that cover the technical aspects of the invention in a specific fashion that sets forth its advances over the prior art." What is "if possible" doing in there? If it is not possible to draft claims and a specification to achieve that end, then one really should not waste the fee that it costs to file the application.


Regarding (2), I see it the other way - there are so many "principles" that an examiner (or PTAB judge) can use to find claims ineligible: mental processes, math, methods of organizing human activity, high-level language, functional claiming, insignificant post-solution activity, insignificant pre-solution activity, WURC elements, etc.

Regarding (3), not a small number of attorneys still draft claims directed toward high-level business methods. Probably because some fraction will get allowed.


In my experience, clients are inclined to "roll the dice" even when told there's only a slight chance that their invention will be found to be patentable - and few attorneys are willing to tell a client that their chances are zilch.

I am with Dr. Borella as to point 2) going in exactly the opposite direction that Mr.DeLassus proposes.

I also disagree with Mr. Demers - appeals are expensive, and GOOD Counsel do the opposite of the type of "any chance at all" pursuit at the level of Appeals.

"[T]here are so many 'principles' that an examiner (or PTAB judge) can use to find claims ineligible: mental processes, math, methods of organizing human activity, high-level language, functional claiming, insignificant post-solution activity, insignificant pre-solution activity, WURC elements, etc."

The question here is "why is the rate of affirmance for §101 rejections so high?". It seems to me that you are answering your own question. A high rate of affirmances is exactly what one should expect in view of this long list of "principles" that the courts have given as potential bases for §101 rejections.

Mr. DeLassus, your ability to be obtuse would be impressive, if it were not known that you are a patent attorney and should recognize that the "so high" carries with it the notion of TOO high.

As it is, you merely sound like an Efficient Infringer hack.

The complete absence of new grounds for rejection is quite shocking. The incoherent 101 reasoning in many Office Actions should result in a higher percentage of new grounds for rejection of 101 rejections than for other rejection types. I am sure that what is really going on is that the PTAB judges have decided that they are allowed to rehabilitate 101 rejections without styling changed reasoning as "new grounds."

Seeing the high affirmance rate overall, my intuition is that examiners are writing some very poor rejections, such that appeal is a more logical choice than amendment even where a good rejection could have been made. The PTAB then rehabilitates the bad rejections instead of reversing them.

If my intuition is right (and I feel quite confident that it is), there is a crisis of poor 101 examination quality. That jives with my lived experience...


The crises is very much real, and the Blame for this can (and should) be placed fully before the Supreme Court for their starting the Gordian Knot (and the rest of the judiciary for rolling that Knot into gargantuan proportions.

Look back at the 2019 PEG, with which Iancu attempted (as much as possible by the Executive Branch overseeing the Administrative Agency of the Patent Office that includes both Examiners and the PTAB) to limit the plainly contradictory case law on eligibility.

Note as well that leaders from all three branches of the government have admitted to this chaotic state of jurisprudence; and while the effort to correct continues (errantly in my view STILL seeking a consensus - with certain parties simply NOT wanting any actual fix), the 'system' remains broken.

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