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I have an application for an invention, let's call it invention X.

The examiner has issued a non-final office action with a 101 rejection, the argument of which is basically, "The claims are directed to an abstract idea, X." followed by "The underlying idea is merely (the purpose of X)".

Can I argue that the examiner has failed to make a prima facie case against the application (and that a final action is precluded), and if I do so, is the examiner likely to be annoyed by this?

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An examiner does not need to do much to make a prima facie case. For a 101 rejection - after saying that it is drawn to an abstract idea they need to say that they see that it also does not have "something more" than the abstract idea. Responding successfully to a 101 abstractness rejection is one of the hardest things to do in patent prosecution today. One hint is that "doing something old with a computer" is out but "making a technically better computer", even in software, is in.

  • I thought that if you get a non-final that doesn't address every claim or provide a prima facie case, you can ensure that your response doesn't then get a final by pointing this out and adding the words "final action is precluded". What am I misunderstanding? – Keir Finlow-Bates Nov 16 '18 at 16:03
  • You are correct - I did not think your question mentioned that you do not think every claim was addressed. – George White Nov 21 '18 at 22:34

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