Selected Topics for Case Studies Pilot

In view of the overwhelming response, we have selected the following six topics to be addressed through a case study.

  1. Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making rejections under 35 U.S.C. §101 and clearly communicating their reasoning.
  2. Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101.
  3. The practice of compact prosecution when 35 U.S.C. §101 rejections are made.  This study will determine whether all appropriate rejections are being made when a subject matter eligibility issue is also identified.
  4. Correctness and clarity of rationale statements in 35 U.S.C. §103 rejections. This study will evaluate whether rejections under 35 U.S.C. §103 are being set forth clearly and with correct rationale to combine statements.
  5. Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description.
  6. Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and identified.

Future Updates

Additional details, updates, and results for each selected case study will be periodically posted as data gathering and analysis provide greater understanding of each topic.