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Perspective

Feb. 17, 2017

Subject matter eligibility in 'office actions'

There are many tools for establishing subject matter eligibility for patent claims that are rejected as allegedly directed to an abstract idea in an office action. By Christopher M. Hall

Christopher M. Hall

Christopher M. Hall is a registered patent agent for Womble Carlyle, Sandridge & Rice

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By Christopher M. Hall

There are many strategies and tools for establishing subject matter eligibility for patent claims that are rejected as allegedly directed to an abstract idea, under 35 USC Section 101, in an "office action." If the rejection in the office action is just a set of copied form paragraphs with no analysis, the patent practitioner can state this, and argue that the examiner has not identified the alleged abstract idea. Or, if the...

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