What is in the Final Rejections: Eligibility

by Dennis Crouch

Though there have been some improvements, initial office actions regularly require a fair amount clean-up and fine-tuning. This process often includes rectifying typographical errors and clarifying loose claim language. It’s also common for the examiner to misconstrue aspects of the invention.  However, by the time the final rejection stage is reached, these issues are usually addressed, and the lines of difference are more clearly drawn.  So, for my study here, I decided to look solely at final office actions and ask the question of what percentage of these involve eligibility rejections.

The chart above reports the percentage of final office actions that include an eligibility rejection.  The uppermost (orange dashed) line on the chart represents applications examined by the eCommerce art units (specifically the 3620s, 3680s, and 3690s). Notably, in 2023 more than 90% of the final rejections for the 3690s (finance, banking, insurance) included an eligibility rejection.  The middle (grey) line in the chart pertains to non-financial data processing inventions (2120s). The main focus of 2120s examination has now shifted predominantly to issues related to AI  simulation and modeling. The third and last (double blue) line in the chart represents all applications. This totals line illustrates that around 9% of all final rejections include an eligibility focus. This is an increase from the 2% rate in 2012.  Notably, about half of the USPTO art units have an eligibility rejection rate of around 0%.

One issue with my study here approach is the time factor. The majority of cases that receive a final rejection are at least three years removed from their effective filing date, and so more recent filings might be doing a better job.  This study was conducted based on a sample size of 100,000 final rejections and is limited only to publicly available files.