JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/

16th August, 2018
To: United States Patent and Trademark Office
Eligibility2018@uspto.gov
Dear United States Patent and Trademark Office
Re: JIPA Comments on Berkheimer Memorandum
We, the Japan Intellectual Property Association, are a private user organization
established in Japan in 1938 for the purpose of promoting intellectual property
protection, with about 950 major Japanese companies as members. Whenappropriate opportunities arise, we offer our opinions on the intellectual propertysystems of other countries and make recommendations for more effective
implementation of the systems.

We appreciate the opportunity you've given us to learn about latest 101
examination guideline, training materials, and so on. We would like to offer ouropinions for your request regarding Federal Register Vol. 83 as follows. Your
deeply consideration on these matters will be appreciated.

1.

When a rejection is formulated according to Memorandum, III. A. 1 orIII. A. 3, we request the examiner to cite a portion of description, which isdecided to form the basis for the rejection and to explain the reasons for thedecision.

2.

When a court decision such as described in the MPEP is cited1according to Memorandum, III. A. 2, we request the examiner to explain thereasons why the court decision is applied to the present application.

Inaddition, we consider that in A. 2, there is room for the examiner to interpret thecourt decision to the examiner's advantage.

"Decisions identifying abstractideas" (quick reference sheet) (posted July 23, 2018) is so useful for applicants,
but the contents in the reference sheet are so short that the examiner might
reject the application with such simplistic criteria.

For instance, although thereference sheet teaches "Encoding and decoding image data" is "Certain
Methods of Organizing Human Activity", we don't believe methods of "Encodingand decoding image data" including unprecedented compression ratio areabstract ideas. We request you to consider enhancing useful materials for theunderstanding of the applicant, for example, categorizing court decisions
pertaining to 35 U.S.C. §101 by technical field or reciting a list of further
accurate technical contents decided to be abstract ideas.

3.

When the examiner makes a decision based on Memorandum, III. A,

we request the examiner to make sure to consider not only an element but also
a combination of elements although this is also already emphasized in theTraining Material (Training: Well-Understood, Routine, Conventional Activity(posted May 7, 2018)).

Further, we request the examiner not to directly givean excerpt from the guidelines but to make sure to give a clear description of
how the examiner has compared a citation or court decision with the present
application, in the rejection.

4.

In Memorandum, III. A. 3, when an applicant follows the procedure for2

only requesting the presentation of a document which forms the basis for therejection, please clarify whether or not that procedure is regarded as a responseto the office action.

5.

In item 4, if the procedure is regarded as a response to the office action,

it is considered that the examiner will present the document through a "nextoffice action."In this case, please clarify whether or not the "next office action"

always becomes the "final office action."

It should be noted that this commentis premised on the assumption that the rejection is formulated only based on 35
U.S.C. §101.

6.

In Memorandum, III. A. 2 or III. A. 3, when the "Final Office Action" isissued based on 35 U.S.C. §101 without sufficiently presenting court decisions
or documents at the examination stage and then the applicant files an appeal, it
is unclear whether (i) an additional court decision or document search is done atthe appeal stage or (ii) the rejection of appeal judgement has been settled down
without doing any additional search, and thus, please clarify this point. We
request you to take into consideration financial burdens on the applicant which
are required for an appeal or a CIP.

7.

According to Memorandum, III. B., the examiner can obviate thepresentation of a document which forms the basis for the rejection by issuing anaffidavit or declaration to the applicant under CFR 1.104(d)(2). We request theexaminer to prudently issue an affidavit or declaration as in MPEP 2144.03.

38.

Memorandum, III. A. 3 uses the following different expressions: "in therelevant field" and "in the relevant industry." Please clarify whether they differ
from each other in the meaning.

JIPA again thanks the USPTO for this opportunity.

Sincerely yours,Masahiro ASAMI
President
Japan Intellectual Property Association4