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Update on USPTO Rejections on 101

Jim Ruttler, Patent Attorney

Posted Monday, October 12, 2015 by Jim Ruttler

The state of patent eligibility is currently in flux with recent court decisions splitting on whether methods or software implemented functionality is patent eligible. Accordingly, examiner’s have been fairly inconsistent across the board in application of Section 101 rejections.

The Patent Trial and Appeals Board within the Patent Office has been issuing opinions on eligibility matters as of late and some of these decisions can help in arguments with examiners or with drafting new patent applications.

In a decision on appeal for application 12/033,611, the Board found that “arranging a plurality of cards on a base to indicate a path of movement, wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card … playing a game on said base” was eligible because it recited a method that couldn’t be performed with a generic set of cards and table. Thus, certain new structure was recited in the claim.

The decision in 12/427,040 found that “a method of playing a card game that simulates a game of football with kibitz and side bet options, the method comprising providing a table as a playing area … providing a deck of special team cards” similarly was eligible because the claim was not merely rules for playing a game, but was actually directed towards the act of playing the game with certain physical features.

In the decision in 11/820,364, the Board found that “providing information pertaining to the sleep position of the infant on an exterior surface of a front of infant sleep garment that is designed to be worn by the infant when sleeping” because the method included a specific physical garment feature.

In the decision in 12/286,751, the Board held that “means for/circuitry for monitoring at least one health attribute of an individual during an artificial sensory experience, means for/circuitry for associating a characteristic of the artificial sensory experience with the at least one health attribute of the individual, and means for/circuitry for modifying at least one of a bioactive agent or the artificial sensory experience at least partly based on associating a characteristic of the artificial sensory experience with the at least one health attribute of the individual” was eligible because the claims recited specific structure - means and circuitry.

Thus, inclusion of specific hardware/structure in the claims may help overcome rejections with the Board. Specific types of garments, circuits, housings, etc. all may help.

To be continued.

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